The Complainant is Teva Pharmaceutical Industries Limited, Israel, represented by SILKA AB, Sweden.
The Respondent is Whois Privacy Service, United States of America (“United States” or “U.S.”) / Luke Roy, United Kingdom.
The disputed domain name <tevapharmus.com> is registered with Amazon Registrar, Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 13, 2020. On October 13, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 16, 2020, 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 the Complainant on October 19, 2020, 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 October 22, 2020.
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 paragraphs 2 and 4 of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 26, 2020. In accordance with paragraph 5 of the Rules, the due date for Response was November 15, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 16, 2020.
The Center appointed Theda König Horowicz as the sole panelist in this matter on November 26, 2020. 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 paragraph 7 of the Rules.
The Complainant was established in 1901 and is a leading pharmaceutical company that delivers worldwide healthcare solutions to a wide public. It produces generic medicines in many therapeutic areas. The Complainant developed innovative treatments for disorders of the central nervous system, including pain, as well as for respiratory products.
The Complainant is the owner of the registered trademark TEVA in numerous countries including the United States and the European Union, notably the U.S. trademark TEVA No 1567918 registered on November 28, 1989. It also owns several domain names comprising the TEVA mark, such as <tevapharm.com>, which is linked to the official website of the Complainant.
The disputed domain name was registered on September 4, 2020. It is inactive.
The Complainant alleges to be the owner of numerous trademark and domain name registrations containing the TEVA mark. It also raises that it operates under the name TEVA Pharmaceuticals Industries Limited. In this regard, the Complainant notes that the disputed domain name incorporates its TEVA trademark, tradename and domain names in its entirety. The addition of “pharmus” in the disputed domain name will be understood by the public as a reference to the Complainant’s business in the United States and is not sufficient to prevent a finding of confusing similarity.
The Complainant further states that there is no bona fide offering of goods or services since the disputed domain name incorporates the Complainant’s distinctive trademark. Furthermore, the Respondent is not known by the disputed domain name.
In addition, the Complainant underlines that the disputed domain name resolves to a passive holding page. It is highly unlikely that the Respondent did not know about the Complainant’s trademark TEVA when it registered the disputed domain name. There is no way in which the disputed domain name could be used legitimately. Consequently, the Respondent should be considered to have registered and to be using the disputed domain name in bad faith.
The Respondent did not reply to the Complainant’s contentions.
Under the Policy, in order to prevail, a complainant must prove the following three elements for obtaining the transfer of a domain name:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) that the respondent has no rights or legitimate interests in the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
The Complainant showed that it has trademark rights in TEVA through U.S. registrations. The distinctive term TEVA is also contained in its trade name.
According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7, the standing test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name. This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. In cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.
The disputed domain name comprises the descriptive term “pharm” which directly relates to the field of activity of the Complainant and to its trade name which contains the term “pharmaceutical”. The mere addition in the disputed domain name of the term “pharm” or the term “us”, which refers to the territory of the United States, does not prevent a finding of confusing similarity with the Complainant’s trademark. See, WIPO Overview 3.0, section 1.8: “[t]he nature of such additional term(s) may however bear on assessment of the second and third elements”.
Under these circumstances, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s mark.
Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in the use of a domain name. The list includes:
(i) the use of the domain name in connection with a bona fide offering of goods or services;
(ii) being commonly known by the domain name; or
(iii) the making of a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers.
Once the Complainant establishes a prima facie case against the Respondent under this ground, the burden of production shifts to the Respondent to rebut it. See WIPO Overview 3.0, section 2.1.
The Complainant makes several statements showing that it never allowed the Respondent to use the trademark TEVA by any means whatsoever and that the Respondent would not have any rights in the trademark TEVA or would be known by it.
Based on the above, the Panel considers that the Complainant has made a prima facie case and the burden of production shifts to the Respondent.
The Respondent has chosen not to reply. The Panel also notes that the disputed domain name is inactive.
No evidence is contained in the case file which would demonstrate that the Respondent has rights or legitimate interests in the disputed domain name, in particular that the Respondent has been commonly known by the disputed domain name or any evidence showing a bona fide offering of goods or services, or any legitimate noncommercial or fair use of the disputed domain name.
Consequently, the Panels finds that the Complainant has established its case under paragraph 4(a)(ii) of the Policy.
The Complainant has shown that its TEVA trademark is registered in the United States and is widely used by the Complainant for pharmaceutical products and treatments.
The Respondent associated in the disputed domain name the protected and distinctive trademark TEVA with the descriptive term “pharm” which show that he knew about the Complainant’s rights.
Consequently, the Panel agrees with the Complainant over the fact that the Respondent knew or should have known of the Complainant’s trademark and deliberately registered the confusingly similar disputed domain name. See WIPO Overview 3.0, section 3.2.2.
The disputed domain name is inactive. The circumstances of this case, including the reputation of the Complainant’s trademark and implausibility of any good faith use of the disputed domain name, support a finding that the passive holding of the disputed domain name is in bad faith. See WIPO Overview 3.0, section 3.3.
The Panel further notes that the Respondent has chosen to remain silent within these proceedings, which is a further indication of bad faith.
In addition, the Respondent registered the disputed domain name through a privacy service, which may not be evidence of bad faith per se, but the use of a privacy service linked with the fact that the Respondent has used false or incomplete contact details to register the disputed domain name, in the context of this case, is an indication that the Respondent wanted to hide the identity and use the disputed domain name in bad faith. See WIPO Overview 3.0, section 3.6.
In light of the above, the Panel finds that the Respondent has registered and used the disputed domain name in bad faith and that the Complainant has established its case under paragraph 4(a)(iii) 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, <tevapharmus.com> be transferred to the Complainant.
Theda König Horowicz
Sole Panelist
Date: December 14, 2020