WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Teva Pharmaceutical Industries Limited v. Amal Mhah, New teva pharma, Domain Admin, Privacy Protect, LLC (PrivacyProtect.org) / Name Redacted

Case No. D2021-0561

1. The Parties

The Complainant is Teva Pharmaceutical Industries Limited, Israel, represented by SILKA AB, Sweden.

The Respondents are Amal Mhah, New teva pharma, Domain Admin, Privacy Protect, LLC (PrivacyProtect.org), United States of America (“United States”) / Name Redacted.¹

2. The Domain Names and Registrar

The disputed domain names <newtevapharma.com> and <newtevapharma.net> (hereafter jointly referred to as the “Disputed Domain Names”) are registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 23, 2021. On February 23, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On February 24, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 26, 2021 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 March 1, 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 the Respondents of the Complaint, and the proceedings commenced on March 4, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 24, 2021. On March 15, 2021, a third party contacted the Center regarding the claimed unauthorized use of its identity in relation to the Disputed Domain Name <newtevapharma.net> in the present proceedings. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on March 31, 2021.

The Center appointed Flip Jan Claude Petillion as the sole panelist in this matter on April 8, 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.

4. Factual Background

The Complainant, Teva Pharmaceutical Industries Limited, is a global pharmaceutical company founded in 1901 with headquarters in Israel. The Complainant ranks among the leading pharmaceutical companies in the world, is active in over 60 countries and employs approximately 43,000 employees.

The Complainant owns various trademark registrations, including the following:

- TEVA, United States word mark No. 1567918 registered on November 28, 1989 in class 5;

- TEVAPHARM, European Union Trade Mark (EUTM) No. 018285645 (word mark) registered on January 9, 2021 in classes 5 and 44.

The Complainant’s group operates on the Internet through websites linked to several domain names, including <tevapharm.com>, <tevapharm.us>, and <tevapharma.com>.

The Disputed Domain Names have been registered on the following dates:

- <newtevapharma.com> on January 20, 2021;
- <newtevapharma.net> on January 26, 2021.

The Disputed Domain Name <newtevapharma.com> appears to be inactive. The Disputed Domain Name <newtevapharma.net> resolved to a website which appeared to be under construction, including text such as “COMING SOON NEW TEVA PHARMA” and pictures of plastic containers and other packaging used for over-the-counter drugs.

5. Parties’ Contentions

A. Complainant

The Complainant considers the Disputed Domain Names to be confusingly similar to a trademark in which it claims to have rights. The Complainant further claims that the Respondents have no rights or legitimate interests in respect of the Disputed Domain Names. According to the Complainant, the Respondents have not used the Disputed Domain Names in connection with a legitimate use. Also, according to the Complainant, the Respondents have not been commonly known by the Disputed Domain Names and are in no way affiliated with the Complainant. Finally, the Complainant claims that the Disputed Domain Names were registered and are being used in bad faith. According to the Complainant, the Respondents could not be unaware of the Complainant’s trademark and reputation when registering the Disputed Domain Names, there is no plausible actual or contemplated active use of the Disputed Domain Names by the Respondents that would not be illegitimate.

B. Respondents

The Respondents did not reply to the Complainant’s contentions.

6. Discussion and Findings

6.1. Preliminary Procedural Issue: Redaction of the name of one of the Respondents

On March 15, 2021, the Center received an email from a third party having a name corresponding to the name of the Respondent identified as being the registrant of the Disputed Domain Name <newtevapharma.net> in the present proceedings. This third party explained that it received the Center’s notification of the Complaint by post and claimed it has nothing to do with the present matter. In the Panel’s view, this may indicate that the name and postal address of this third party has been fraudulently used to register the Disputed Domain Name <newtevapharma.net>.

Under these circumstances, as further detailed below, the Panel considers it appropriate to redact the name of the Respondent related to the Disputed Domain Name <newtevapharma.net> from the present decision to avoid any confusion of reputational damage to this third party (see Lidl Stiftung & Co. KG v. Name Redacted, WIPO Case No. D2020-1441; Applied Materials Inc. v. Contact Privacy Inc. Customer 0152257585 / Name Redacted, WIPO Case No. D2019-1116; Banco Bradesco S.A. v. FAST-12785241 Attn. Bradescourgente.net / Name Redacted, WIPO Case No. D2009-1788).

6.2. Preliminary Procedural Issue 2: Consolidation of Multiple Domain Names and Respondents

Paragraph 10(e) of the Rules generally empowers panels to consolidate multiple domain name disputes in accordance with the Policy and the Rules. Paragraph 3(c) of the Rules provides that a complaint may relate to more than one domain name only when the domain names are registered by the same domain name holder. 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.

Panels have considered a range of factors, typically present in some combination, as useful to determining whether such consolidation is appropriate, such as similarities in or relevant aspects of (i) the registrants’ identity(ies) including pseudonyms, (ii) the registrants’ contact information including email address(es), postal address(es), or phone number(s), including any pattern of irregularities, (iii) relevant IP addresses, name servers, or webhost(s), (iv) the content or layout of websites corresponding to the disputed domain names, (v) the nature of the marks at issue (e.g., where a registrant targets a specific sector), (vi) any naming patterns in the disputed domain names (e.g., <mark-country> or <mark-goods>), (vii) the relevant language/scripts of the disputed domain names particularly where they are the same as the mark(s) at issue, (viii) any changes by the respondent relating to any of the above items following communications regarding the disputed domain name(s), (ix) any evidence of respondent affiliation with respect to the ability to control the disputed domain name(s), (x) any (prior) pattern of similar respondent behavior, or (xi) other arguments made by the complainant and/or disclosures by the respondent(s) (see section 4.11.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).

In the present case, the Panel observes the following:

- both Disputed Domain Names were registered using the same organisation name (“New teva pharma”), the same physical address and same email address;
- both Disputed Domain Names were registered around the same period;
- both Disputed Domain Names are identical except for the Top-Level Domains (“TLDs”).

In view of the above, the Panel finds that, more likely than not, the Disputed Domain Names are subject to the common ownership or control of the same entity or person. The Panel also considers the consolidation of both Disputed Domain Names to be fair and procedurally efficient.

Accordingly, the Panel concludes that the consolidation of both Disputed Domain Names asserted by the Complainant against the Respondents is consistent with the Policy and Rules. The Panel will proceed to a decision on the merits regarding both Disputed Domain Names.

6.3. Substantive elements of the Policy

Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

The onus is on the Complainant to make out its case and it is apparent, both from the terms of the Policy and the decisions of past UDRP panels, that the Complainant must show that all three elements set out in paragraph 4(a) of the Policy have been established before any order can be made to transfer the Disputed Domain Names. As the proceedings are administrative, the standard of proof is the balance of probabilities.

Thus, for the Complainant to succeed, they must prove, within the meaning of paragraph 4(a) of the Policy and on the balance of probabilities that:

i. the Disputed Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
ii. the Respondents have no rights or legitimate interests in respect of the Disputed Domain Names; and
iii. the Disputed Domain Names have been registered and are being used in bad faith.

The Panel will deal with each of these requirements in turn.

A. Identical or Confusingly Similar

To prove this element, the Complainant must first establish that there is a trademark or service mark in which it has rights. The Complainant has clearly established that there are trademarks in which it has rights. The Complainant’s TEVA and TEVAPHARM trademarks have been registered and used in various countries in connection to the Complainant’s pharmaceutical business.

The Disputed Domain Names incorporate the Complainant’s TEVA and TEVAPHARM trademarks in their entirety, simply adding the prefix “new” and the letter “a” at the end. Where the relevant trademark is recognizable within the Disputed Domain Names, the addition of other (descriptive) terms would not prevent a finding of confusing similarity under the first element (see section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).

Additionally, it is well established that TLDs, here “.com” and “.net”, may be disregarded when considering whether the Disputed Domain Names are confusingly similar to a trademark in which the Complainant has rights.

In light of the above, the Panel considers the Disputed Domain Names to be confusingly similar to the Complainant’s TEVA and TEVAPHARM trademarks.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, the Complainant has the burden of establishing that the Respondents have no rights or legitimate interests in respect of the Disputed Domain Names.

As established by previous UDRP panels, it is sufficient for the Complainant to make a prima facie showing that the Respondents have no rights or legitimate interests in the Disputed Domain Names in order to place the burden of production on the Respondents (see section 2.1 of the WIPO Overview 3.0).

The Panel notes that the Respondents have not apparently been commonly known by the Disputed Domain Names and that the Respondents do not seem to have acquired trademark or service mark rights. According to the information provided by the Registrar, the Respondents’ organisation is named “New teva pharma” and is based in the United States. However, there is no evidence on record that a company has been registered in the United States under this name and the Complainant’s assertion that no such company exists remains unrebutted. The Respondents’ registration and use of the Disputed Domain Names was also not authorized by the Complainant.

Where a domain name consists of a trademark plus an additional term, UDRP panels have largely held that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner (see section 2.5.1 of the WIPO Overview 3.0). The Disputed Domain Names incorporate the Complainant’s TEVA and TEVAPHARM trademarks in their entirety, simply adding the prefix “new” and the letter “a” at the end. The addition of the letter “a” does not distinguish the Disputed Domain Names from the Complainant and its trademarks. On the contrary, the term “pharma” directly refers to the Complainant’s business. In combination with the word “new”, the Disputed Domain Names could easily be considered as referring to a new entity linked to the Complainant. Therefore, the Panel finds that the Disputed Domain Names carry a risk of implied affiliation with the Complainant and cannot constitute fair use.

Beyond looking at the domain names and the nature of any additional terms appended to these, UDRP panels assess whether the overall facts and circumstances of the case, including the absence of a response, support a fair use or not (see sections 2.5.2 and 2.5.3 of the WIPO Overview 3.0).

The Panel finds no signs of a legitimate noncommercial or fair use of the Disputed Domain Name <newtevapharma.com>, as it appears to be inactive. According to evidence provided by the Complainant, the Disputed Domain Name <newtevapharma.net> resolved to a website which appeared to be under construction, including text such as “COMING SOON NEW TEVA PHARMA”. The website mentioned the Complainant’s TEVA and TEVAPHARM trademarks several times, and pictures of plastic containers and other packaging used for over-the-counter drugs suggests a link with the Complainant’s pharmaceutical business. According to the Panel, such use does not amount to a legitimate noncommercial or fair use either.

The Respondents had the opportunity to demonstrate their rights or legitimate interests, but did not do so. In the absence of a Response from the Respondents, the prima facie case established by the Complainant has not been rebutted.

Therefore, the Panel finds that the Complainant has established that the Respondents have no rights or legitimate interests in the Disputed Domain Names. In light of the above, the Complainant succeeds on the second element of the Policy.

C. Registered and Used in Bad Faith

The Complainant must prove on the balance of probabilities both that the Disputed Domain Names were registered in bad faith and that these are used in bad faith (see section 4.2 of the WIPO Overview 3.0 and, for example, Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 and Control Techniques Limited v. Lektronix Ltd, WIPO Case No. D2006-1052).

Paragraph 4(b) of the Policy provides a non-exhaustive list of factors, any one of which may demonstrate bad faith. Among these factors demonstrating bad faith registration and use is the use of a domain name to intentionally attempt to attract, for commercial gain, Internet users to a website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.

In the present case, the Panel finds that it is more likely than not that the Respondents were aware of the Complainant and its trademark rights when they registered the Disputed Domain Names. The Complainant provides evidence of various trademarks including one registered since 1989 in the United States, where the Respondents seem to be located. Previous UDRP panels have also confirmed the extensive registration and widely-known character of the Complainant’s TEVA mark (see Teva Pharmaceutical Industries Limited v. Linda Moore, WIPO Case No. D2019-3159; Teva Pharmaceutical Industries, Ltd v. Oneandone Private Registration, 1&1 Internet Inc / Kristin Beckman, WIPO Case No. D2018-1029).

The Disputed Domain Names include the Complainant’s distinctive TEVA and TEVAPHARM trademarks in their entirety. In the Panel’s view, the Respondents’ awareness of the Complainant’s trademark rights at the time of registration suggests bad faith (see Red Bull GmbH v. Credit du Léman SA, Jean-Denis Deletraz, WIPO Case No. D2011-2209; BellSouth Intellectual Property Corporation v. Serena, Axel, WIPO Case No. D2006-0007).

As mentioned above, the Disputed Domain Name <newtevapharma.net> resolved to a website which appeared to be under construction, including text such as “COMING SOON NEW TEVA PHARMA”. The website mentioned the Complainant’s TEVA and TEVAPHARM trademarks several times, and pictures of plastic containers and other packaging used for over-the-counter drugs suggests a link with the Complainant’s pharmaceutical business.

Even though it is unclear whether the Disputed Domain Name <newtevapharma.net> was to be used for direct commercial gain, the Panel finds that the use of terms which are either identical or similar to several trademarks of the Complainant suggests an intention to profit from the reputation of the Complainant’s trademarks in some way. In any event, by mentioning terms identical or similar to several trademarks of the Complainant in a context which is at least close to the Complainant’s pharmaceutical business, the Panel finds that the concerned Respondent creates a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of the website linked to the Disputed Domain Name <newtevapharma.net> or of a product or service on this website.

The Panel observes that the disputed domain name <newtevapharma.com> appears to be inactive. The passive holding of a domain name may amount to bad faith when it is difficult to imagine any plausible future active use of a domain name by the respondent that would be legitimate and would not interfere with the complainant’s well-known mark (see Inter-IKEA v. Polanski, WIPO Case No. D2000-1614; Inter-IKEA Systems B.V. v. Hoon Huh, WIPO Case No. D2000-0438; Telstra Corporation Limited v. Nuclear Marshmallows, supra). Additional factors to support a finding of bad faith in relation to the passive holding of a domain name include the degree of distinctiveness or reputation of the Complainant’s mark, the failure of the Respondents to submit a response or to provide any evidence of actual or contemplated good-faith use, and the Respondents concealing their identity or use of false contact details (see section 3.3 of WIPO Overview 3.0).

In the present case, the Panel finds that the Complainant has sufficiently proven the reputation of its TEVA trademark. In the Panel’s view, the use of both TEVA and TEVAPHARM trademarks of the Complainant makes it difficult to conceive any plausible legitimate use of the Disputed Domain Names by the Respondents.

In addition, as explained in section 6.1 above, there are indications that the Disputed Domain Name <newtevapharma.net> has been registered using false contact details. As the postal address of both Disputed Domain Names is identical, the use of false contact details may be applicable to the Disputed Domain Name <newtevapharma.com> as well. The Panel finds that these are further indications of bad faith.

By failing to respond to the Complaint, the Respondents did not take any initiative to contest the foregoing. Pursuant to paragraph 14 of the Rules, the Panel may draw the conclusions it considers appropriate.

Therefore, the Panel finds that, on the balance of probabilities, it is shown that the Disputed Domain Names were registered and are being used in bad faith. In light of the above, the Complainant also succeeds on the third and last element of the Policy.

7. Decision

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 <newtevapharma.com> and <newtevapharma.net> be transferred to the Complainant.

For purposes of properly executing this order, the Panel also directs the Registrar’s attention to Annex 1 hereto that identifies the individual listed as registrant of the Disputed Domain Name <newtevapharma.net> in the formal record of registration, and orders that the Disputed Domain Name <newtevapharma.net> be transferred from that individual to the Complainant.

The Panel directs the Center that Annex 1 shall not be published along with this decision.

Flip Jan Claude Petillion
Sole Panelist
Date: April 21, 2021

¹ In light of a potential identity theft, the Panel has redacted the name of one of the Respondents from this decision as discussed in section 6.1 below.