WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Teva Pharmaceutical Industries Limited v. Linda Moore

Case No. D2019-3159

1. The Parties

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

The Respondent is Linda Moore, United States of America (“United States”).

2. The Domain Name and Registrar

The disputed domain name <tevapharmhq.com> is registered with Hostinger, UAB (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 20, 2019. On December 20, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 23, 2019, 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 January 15, 2020. In accordance with the Rules, paragraph 5, the due date for Response was February 4, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 12, 2020.

The Center appointed Miguel B. O'Farrell as the sole panelist in this matter on February 21, 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 the Rules, paragraph 7.

4. Factual Background

The Complainant is a large international producer of generic medicines.

The Complainant owns several trademark registrations of TEVA as a nominal mark in many countries, including United States trademark registration TEVA No. 1567918 registered on November 28, 1989 and trademark registration TEVA No. 2353386 registered on May 30, 2000.

The Complainant also owns several domain names, such as: <tevapharm.com> registered on June14, 1996 and <tevapharm.us> registered on April 24, 2002.

The disputed domain name <tevapharmhq.com> was registered on October 28, 2019 and relates to a website which does not show any activity.

5. Parties’ Contentions

A. Complainant

The Complainant claims to rank among the leading pharmaceutical companies in the world and to be the largest generic medicines manufacturer worldwide, active in more than 60 countries with approximately 45,000 employees around the world.

TEVA is a distinctive name registered by the Complainant and is not a name which one would legitimately chose as a domain name without having specific rights to such name.

In essence, the Complainant claims that the disputed domain name <tevapharmhq.com> is confusingly similar to the trademark TEVA in which the Complainant has rights; that the Respondent has no rights or legitimate interests in the disputed domain name, and that the disputed domain name has been registered and is used by the Respondent in bad faith.

More specifically, the Complainant asserts that there is no bona fide offering of goods or services where the disputed domain name incorporates a trademark which is not owned by the Respondent, nor is the Respondent known by the name “TEVA”.

Finally, the Complainant requests the Panel to order the transfer of the disputed domain name to the Complainant.

B. Respondent

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

6. Discussion and Findings

According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the disputed domain name, the Complainant must prove each of the following, namely that:

(i) the disputed domain name is identical or confusingly similar to a trade mark 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.

A. Identical or Confusingly Similar

The Panel is satisfied that the Complainant has proved that it has rights in the trademark TEVA.

The standing test for confusing similarity involves a reasoned but relatively straightforward comparison between the trademark and the disputed domain name to determine whether the domain name is confusingly similar to the trademark. The test 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 domain name.

In this case the disputed domain name <tevapharmhq.com> contains the Complainant’s trademark TEVA in its entirety. The Panel considers that the addition of the descriptive term “pharm” (for “pharmaceutical”) nor the letters “hq” (which may be interpreted as a reference to the Complainant’s “headquarters”) are not sufficient to avoid a finding of confusing similarity.

As set forth in section 1.7 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) in cases where the domain name incorporates the entirety of a trademark the domain name will normally be considered confusingly similar to that mark.

Furthermore, as stated in section 1.8 of WIPO Overview 3.0, where the relevant trademark is recognizable within the disputed domain name, the addition of other terms would not prevent a finding of confusing similarity under the first element.

For the purposes of assessing identity or confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic Top-Level Domain (“gTLD”) as it is viewed as a standard registration requirement (section 1.11.1 of WIPO Overview 3.0). Thus, the Panel shall disregard the “.com” gTLD included in the disputed domain name for the purposes of confusing similarity.

The Panel finds that the disputed domain name is confusingly similar to the trademark TEVA in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled.

Furthermore, as stated in section 2.5.1 of WIPO Overview 3.0, the composition of the disputed domain name including the Complainant’s trademark in addition to the terms “pharm” and “uk” carry a risk of implied affiliation with the Complainant, which supports a finding that the Respondent lacks rights or legitimate interests in the disputed domain name.

B. Rights or Legitimate Interests

Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established, as it is put in section 2.1 of WIPO Overview 3.0, that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.

The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not responded and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the disputed domain name.

The Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

The Respondent registered the disputed domain name that contains a third party’s trademark without authorization. The Respondent could not ignore the existence of the name and trademark TEVA when it registered the disputed domain name on October 28, 2019, because TEVA is the name and the trademark of the Complainant which has been extensively registered (including in the United States where the Respondent resides) and used by the Complainant many years before that date. Therefore it is difficult to conceive that any use of the disputed domain name would not be related by Internet users to the Complainant and its activities. This assumption is further proved by the fact that the disputed domain name entirely contains the Complainant’s trademark TEVA.

In light of the above, it is inconceivable that the Respondent was not well aware of the Complainant’s trademark rights at the time of the registration of the disputed domain name. Indeed, the Respondent's purpose in registering the disputed domain name incorporating TEVA was very likely to capitalize on the reputation of the Complainant's trademark by diverting Internet users to its own website.

The inclusion of the descriptive term “pharm” in the disputed domain name <tevapharmhq.com> clearly strengthens the idea of an affiliation with the Complainant. Consumers seeking to purchase a TEVA pharmaceutical product would be liable to enter the disputed domain name site expecting to contact the Complainant.

The Complainant sent a cease and desist letter to the Respondent on November 19, 2019 advising that the Respondent’s unauthorized use of the trademark TEVA in the disputed domain name violated the Complainant’s rights and requesting a voluntary transfer of the disputed domain name. The letter remained unanswered, despite a reminder sent by the Complainant on November 25, 2019.

Failure to respond to a cease and desist letter has been considered relevant for a finding of bad faith in previous cases resolved under the Policy (AB Electrolux v. Yasser Merdash, WIPO Case No. D2016-1352, and Nike, Inc. v. Azumano Travel, WIPO Case No. D2000-1598).

Panelists have found that non-use of a domain name does not prevent a finding of bad faith under the so called doctrine of “passive holding” when circumstances exist such as the distinctiveness or reputation of the complainant’s mark, the failure of the respondent to submit a response or to provide any evidence of actual or contemplated goodfaith use and the implausibility of any good faith use to which the disputed domain name may be put. The Panel finds that all these circumstances a relevant to this administrative proceeding and therefore that a finding of bad faith lies in under the doctrine of “passive holding”. (Section 3.3 of WIPO Overview 3.0).

In conclusion, the Panel considers that the Respondent has registered and is using the disputed domain name in bad faith to confuse Internet users and thereby derive an illegal commercial benefit by taking advantage of the popularity of the Complainant’s trademark TEVA.

Therefore, the Complaint also succeeds on the third prong of paragraph 4(a) 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 name <tevapharmhq.com> be transferred to the Complainant.

Miguel B. O'Farrell
Sole Panelist
Date: March 6, 2020