WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Teva Pharmaceutical Industries Limited v. Neeraj Manchanda, Kohinoor Medical Associates PA

Case No. D2020-2149

1. The Parties

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

Respondent is Neeraj Manchanda, Kohinoor Medical Associates PA, United States of America (“United States”).

2. The Domain Name and Registrar

The disputed domain names <ajovydosing.com> and <copaxonedosing.com> are registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 14, 2020. On August 14, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On August 17, 2020, 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. On August 18, 2020 the Center notified the Suspension of the proceedings before commencement. On September 10, 2020, by petition of Complainant, the proceedings were reinstituted.

The Center sent an email communication to Complainant on September 14, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on September 21, 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 the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on September 22, 2020. In accordance with the Rules, paragraph 5, the due date for Response was October 12, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 13, 2020.

The Center appointed David Perkins as the sole panelist in this matter on October 29, 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

4.A Complainant

4.A.1 Complainant, which was established in 1901, is today a leading global pharmaceutical company. It is one of the world’s largest generic medicines producer, 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, Complainant states that it has a world-leading position in innovative treatments for disorders of the central nervous system.

4.A.2 Complainant is active in over 60 countries worldwide and has some 45,000 employees. In 2017 Complainant produced approximately 120 billion tablets from its 65 manufacturing facilities worldwide.

4.A.3 The Complaint concerns two products, COPAXONE and AJOVY. COPAXONE is a prescription medicine for treatment of relapsing forms of multiple sclerosis (MS). AJOVY (fremanezumab) is a prescription medicine used for the preventive treatment of migraine in adults.

Complainant’s trade marks.

4.A.4 Annexed to the Complaint are particulars of the following registered trade marks of which Complainant is the proprietor.

4.A.5 Also annexed to the Complaint are particulars of Complainant’s <copaxone.com> domain name, which was created on February 28,1997.

4.B Respondent

4.B.1 In the absence of a Response, what is known of Respondent is contained in the Complaint and its Annexes.

4.B.2 The disputed domain names <copaxonedosing.com> and <ajovydosing.com> were both registered on February 10, 2020.

4.B.3 The Complaint states that the two disputed domain names both resolve to pay per click sites which contain sponsored links to a variety of third party sites that promote medical services.

4.C Correspondence between the Parties

4.C.1 Annexed to the Complaint is the following email exchanges between the Parties. On April 21, 2020 Complainant sent Respondent a ‘Cease and Desist’ email to which on May 13, 2020 Respondent replied in the following terms:

“I am in the process of giving up that domain name. I have reached out to godaddy. Hopefully this will get resolved soon. Thanks...”

4.C.2 By email dated May 14, 2020 Complainant requested Respondent to transfer the two disputed domain names rather than cancel them and by email dated May 26, 2020 explained what was required in order to effect transfer. Respondent failed to reply to that request despite two reminder emails from Complainant dated June 16, 2020 and June 25, 2020.

5. Parties’ Contentions

5.A Complainant.

Identical or Confusingly Similar

5.A.1 Complainant’s case is that, since both the disputed domain names incorporate its AJOVY and COPAXONE trade marks in their entirety with the descriptive suffix “dosing”, they are confusingly similar to those trade marks. In support of that case, Complainant cites section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) and WIPO UDRP decisions where confusing similarity has been found on similar facts.

Rights or Legitimate Interests

5.A.2 First, Complainant says that it has neither licensed nor otherwise permitted use by Respondent of either of the AJOVY or COPAXONE trade marks.

5.A.3 Second, pointing to use of the two disputed domain names at pay per click sites, Complainant submits that such cannot constitute a bona fide use of the type demonstrating rights to or legitimate interests in those domain names under paragraph 4(c)(i) of the Policy. In support of that contention, Complainant cites two decisions under the Policy: PRL USA Holdings, Inc. v LucasCobb, WIPO Case No. D2006-0162, where the respondent was held to have no rights or legitimate interests in the disputed domain name <ralphlaurenpants.com>, which resolved to a parking page to generate pay per click revenue; andExpress Scripts, Inc. v Windgather Investments Ltd./Mr. Cartwright, WIPO Case No. D2007-0267. In that case, the respondent, who was in the business of the registration and sale of expired domain names, had parked the disputed domain name until it could be sold. The parking company had been permitted to generate revenue from advertisements to which the disputed domain name resolved.

5.A.4 Third, Respondent’s willingness to ‘giving up’ the domain names (Respondent’s email of May 13, 2020 quoted in paragraph 4.C.1 above) is, Complainant says, inconsistent with demonstrating rights or legitimate interests in those domain names.

Registered and Used in Bad Faith

5.A.5 The Complaint states that the Respondent “runs a medical practice and is a doctor.” Hence, Complainant says Respondent was clearly aware of its products under the AJOVY and COPAXONE trade marks when registering the disputed domain names. Consequently, Complainant says, registration and use of the disputed domain names is in bad faith.

5.B Respondent

5.B.1 As noted, no formal Response has been filed by Respondent.

6. Discussion and Findings

6.1 The Policy paragraph 4(a) provides that Complainant must prove each of the following in order to succeed in an administrative proceeding

(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) that Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) that the disputed domain name has been registered and is being used in bad faith.

6.2 The Policy paragraph 4(c) sets out circumstances which, in particular but without limitation, if found by the Panel to be proved shall demonstrate Respondent's rights or legitimate interests in the disputed domain name .

6.3 The Policy paragraph 4(b) sets out circumstances which, again in particular but without limitation, if found by the Panel to be present shall be evidence of the registration and use of a domain name in bad faith.

6.4 As stated, the circumstances set out in paragraph 4(b) and 4(c) of the Policy are not exclusionary. They are without limitation. That is, the Policy expressly recognizes that other circumstances can be evidence relevant the requirements of paragraphs 4(a)(ii) and (iii) of the Policy.

6.A Identical or Confusingly Similar

6.A.1 From the particulars of the registered trade marks set out in paragraph 4.A.4 above, clearly Complainant has rights in the AJOVY and COPAXONE trade marks.

6.A.2 Since the two disputed domain names incorporate those trade marks in their entirety with the addition of the descriptive term “dosing”, they are confusingly similar. See sections 1.8 and 1.7 of the WIPO Overview 3.0.

6.A.3 Accordingly, Complainant meets the requirements of paragraph 4(a)(i) of the Policy.

6.B Rights or Legitimate Interests

6.B.1 On the basis of the facts set out in the Complaint summarised above and in the absence of a Response from Respondent, the Panel takes the view that Respondent could not demonstrate any of the circumstances identified in paragraph 4(c) of the Policy as establishing rights to or legitimate interests in either of the disputed domain names. Additionally, the confusing similarity of the two disputed domain names with Complainant’s AJOVY and COPAXONE trade marks is inconsistent with the Respondent having rights to or legitimate interests in those domain names.

6.B.2 Accordingly, Complainant has established its case under paragraph 4(a)(ii) of the Policy.

6.B.3 Although it does not affect the Panel’s decision under this requirement of the Policy, the Panel does not regard the “Express Scripts” case cited in paragraph 5.A.3 above as persuasive. The case reference is as stated above, not as stated in the Complaint.

6.C Registered and Used in Bad Faith

6.C.1. Complainant’s assertion of registration in bad faith is accepted.

In terms of the use of the disputed domain names, the Panel notes that the two disputed domain names are pay per click sites where the links compete with or capitalize on the reputation and goodwill of Complainant’s trade marks. This constitute evidence of bad faith use as described under paragraph 4(b)(iv) of the Policy.

Additionally, the Panel refers to the holding in WIPO Case No. D2000-0003 Telstra Corporation Limited v Nuclear Marshmallows as in point given the implausibility of any good faith use to which either of the disputed domain names could be put: WIPO Overview 3.0, section 3.3.

6.C.2 In the circumstances, the Complaint satisfies the requirement of paragraph 4(a)(iii) 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 <ajovydosing.com> and <copaxonedosing.com> be transferred to Complainant.

David Perkins
Sole Panelist
Date: November 20, 2020