WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Teva Pharmaceutical Industries Ltd. v. WhoisGuard Inc. / Dave Tapper
Case No. D2020-3484
1. The Parties
The Complainant is Teva Pharmaceutical Industries Ltd., Israel, represented by SILKA AB, Sweden.
The Respondent is See WhoisGuard Inc., Panama / Dave Tapper, United States of America (“United States”).
2. The Domain Name and Registrar
The disputed domain name <tevapharmltd.com> is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 21, 2020. On December 22, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 22, 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 December 23, 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 December 26, 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 the Respondent of the Complaint, and the proceedings commenced on January 6, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 26, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 1, 2021.
The Center appointed Gabriel F. Leonardos as the sole panelist in this matter on February 23, 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. On February 23, 2021, the Center received an email communication from the initially appointed panel regarding recent development of potential conflict of interest. On March 5, 2021, the Center informed the Parties of a Recusal and subsequent Notification of Panel Appointment, and Daniel Peña was appointed as the sole panelist in this matter. 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 major producer of generic medicines and is active in more than 60 countries.
The Complainant has registered various trademarks containing the mark TEVA including:
- United States trademarks TEVA, Registration No. 73781811, registered on November 28, 1989 and Registration No. 75601758, registered on May 30, 2000; and
- International Trademark TEVA, Registration No. 1319184, registered on June 15, 2016.
Additionally, the Complainant is the registrant of several domain names incorporating (entirely) the trademark TEVA.
The disputed domain name resolved to a Pay-Per-Click (“PPC”) website that made reference to the Complainant’s competitors.
The disputed domain name was registered on October 25, 2020.
5. Parties’ Contentions
A. Complainant
The Complainant was established in 1901 and is a 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. The Complainant ranks among the leading pharmaceutical companies in the world and is active in over 60 countries and employs approximately 42,000 around the world.
The Complainant is the owner of the registered trademark TEVA in numerous countries including the United States, e.g. United States word mark TEVA (registration No. 73781811) registered on November 28, 1989. Moreover, the Complainant has registered domain names containing the term “teva”, for example <tevapharm.com>.
The disputed domain name was registered on October 25, 2020 and incorporates the Complainant’s registered trademarks in its entirety - it only adds the descriptive term “ltd”. The disputed domain name is confusingly similar to the Complainant’s trademarks.
The Respondent has no rights or legitimate interests in respect of the disputed domain name; it is not known under the disputed domain name and it is not affiliated with the Complainant in any way and has not been authorized by the Complainant to use or register the disputed domain name.
The Respondent has registered the disputed domain name in bad faith since at the time of registration of the disputed domain name the Respondent was clearly aware of the Complainant and its trademarks. Moreover, the disputed domain name resolves to a PPC website that made reference to the Complainant’s competitors which is evidence of bad faith usage under the Policy.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests with respect to the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The disputed domain name is confusingly similar to the Complainant’s registered marks TEVA since it entirely contains this trademark and only adds the terms “pharm” and “ltd”. The expression “pharm” corresponds to the abbreviation of pharmaceutical that corresponds to the business sector for which the Complainant is recognized. Likewise, the expression “ltd” is part of the company name in terms of its corporate legal structure.
It has long been established under UDRP decisions that where the relevant trademark is recognizable within the disputed domain name, the mere addition of other terms whether descriptive, geographical, pejorative, meaningless, or otherwise will not prevent a finding of confusing similarity under the first element of the Policy (see section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
Finally, it has also long been held that generic Top-Level Domains (“gTLDs”), “.com” in this case, should be disregarded when assessing whether a domain name is identical or confusing similar to a trademark (see section 1.11 of the WIPO Overview 3.0).
The Panel therefore finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element (see section 2.1 of the WIPO Overview 3.0).
In the present case the Respondent failed to submit a Response. Considering all of the evidence in the Complaint (especially with regard to the Annexes presented by the Complainant) and the Complainant’s contentions that the Respondent has no rights or legitimate interests in the disputed domain name, that the Respondent has no connection or affiliation with the Complainant, and the Respondent has not received any license or consent, express or implied, to use the Complainant’s trademarks TEVA in a domain name or in any other manner lead the Panel to the conclusion that the Complainant has made out an undisputed prima facie case.
The Panel therefore finds that the conditions set out in paragraph 4(a)(ii) of the Policy have been met by the Complainant.
C. Registered and Used in Bad Faith
As stated in the Policy, both conditions, registration and used in bad faith, must be demonstrated; consequently, the Complainant must show that the disputed domain name was registered by the Respondent in bad faith as well as the disputed domain name is being used by the Respondent in bad faith.
(a) The disputed domain name is confusingly similar with the trademark TEVA in which the Complainant has rights; the mark TEVA is non-descriptive.
The disputed domain name was registered on October 25, 2020. The Complainant has registered trademark rights in the mark TEVA since 1989 onwards and has been using the mark for decades.
It is more likely than not that the Respondent has registered the disputed domain name with knowledge of the Complainant’s rights; this is especially supported by the fact that the trademark TEVA is distinctive and the Respondent added to generic expressions to the Complainant’s trademark which refer to the Complainant’s commercial activities and corporate identity, “pharm” and “ltd”, respectively.
The Panel is therefore convinced that the disputed domain name was registered with full knowledge of the Complainant’s rights and as such in bad faith by the Respondent.
(b) The disputed domain name resolves to a PPC website that includes links related to Complainant’s activities, as well as links to Complainant’s competitors. On the basis of these facts, the Panel finds that the disputed domain name is also being used in bad faith.
The Panel therefore finds that the Complainant has satisfied 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 name, <tevapharmltd.com> be transferred to the Complainant.
Daniel Peña
Sole Panelist
Date: March 19, 2021
