The Complainant is Actavis Holdco US Inc., United States of America (“United States”), represented by SILKA Law AB, Sweden.
The Respondent is Whois Agent, Domain Protection Services, Inc., United States / Bryan Farajolah, Music Merchandise Addiction Mental Health Awareness, United States. 2. The Domain Names and Registrar
The disputed domain names The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 18, 2020. On March 18, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On March 18, 2020, 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 March 30, 2020. In accordance with the Rules, paragraph 5, the due date for Response was April 19, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 22, 2020. On April 22, 2020, the Center received an email communication from the Respondent. The Center appointed Lynda M. Braun as the sole panelist in this matter on April 30, 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, a global pharmaceutical company involved in the development, manufacture, and distribution of its own brand-named pharmaceuticals as well as the manufacture and distribution of generic pharmaceutical products, has a commercial presence across approximately 100 countries. In 2014, the Complainant acquired Allergan, Inc. and in 2016, Teva Pharmaceutical Industries Ltd acquired Allergan’s generics business. Thus, the Complainant is now an indirect wholly-owned subsidiary of Teva Pharmaceutical Industries Ltd. The Complainant’s global headquarters is in Ireland and its administrative headquarters is in New Jersey. The Complainant owns trademarks for ACTAVIS in various jurisdictions, including in the United States, where the Respondent resides. For example, the Complainant owns ACTAVIS, United States Registration No. 3845070, registered on September 7, 2010; and United States Registration No. 4694086, registered on March 3, 2015 (together, the “ACTAVIS Mark”). The Disputed Domain Names were created on February 15, 2020. The Disputed Domain Names The following are the Complainant’s contentions: - the Disputed Domain Names are confusingly similar to the Complainant’s Mark; - the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and, - the Respondent registered and is using the Disputed Domain Names in bad faith. The Complainant seeks the transfer of the Disputed Domain Names from the Respondent to the Complainant in accordance with paragraph 4(i) of the Policy. B. Respondent Following the notification that the Respondent had defaulted in submitting a Response, the Center received an email communication from the Respondent, which stated: “Why am I being contacted? I saw a domain and I bought it. If it wasn’t available, then why was it for sale?” The Respondent did not provide a substantive response to the Complaint. 5. Discussion and Findings Paragraph 4(a) of the Policy requires that the Complainant prove the following three elements in order to prevail in this proceeding: (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 Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and (iii) the Disputed Domain Names were registered and is being used in bad faith. A. Identical or Confusingly Similar This element consists of two parts: first, does the Complainant have rights in a relevant trademark or trademarks and, second, are the Disputed Domain Names identical or confusingly similar to those trademarks. It is uncontroverted that the Complainant has established rights in the ACTAVIS Mark based on both its longstanding and continuous use to market its services, and its trademark registrations in the United States. The Disputed Domain Names It is well established that a domain name that wholly incorporates a trademark is confusingly similar to that trademark for purposes of the Policy. See Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903. Here, the Disputed Domain Names contain the Complainant’s ACTAVIS Mark in its entirety and thus, the Disputed Domain Names are confusingly similar to the ACTAVIS Mark. Moreover, as stated in section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), “where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”. For example, numerous UDRP decisions have reiterated that the addition of a descriptive or dictionary word to a trademark is insufficient to prevent confusing similarity. See Allianz Global Investors of America, L.P. and Pacific Investment Management Company (PIMCO) v. Bingo-Bongo,WIPO Case No. D2011-0795; Hoffmann-La Roche Inc. v. Wei-Chun Hsia,WIPO Case No. D2008-0923; Nintendo of America Inc. v. Fernando Sascha Gutierrez,WIPO Case No. D2009-0434. Finally, the addition of a gTLD such as “.com” in a domain name is technically required. Thus, it is well established that such element may be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. Proactiva Medio Ambiente, S.A. v. Proactiva,WIPO Case No. D2012-0182. Accordingly, the first element of paragraph 4(a) of the Policy has been met by the Complainant. B. Rights or Legitimate Interests Under the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent carries the burden of production to demonstrate rights or legitimate interests in the disputed domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview 3.0, section 2.1. In this case, the Panel finds that the Complainant has made out a prima facie case. The Respondent has not submitted any arguments or evidence to rebut the Complainant’s prima facie case. Furthermore, the Complainant has not authorized, licensed or otherwise permitted the Respondent to use its ACTAVIS Mark, nor does the Complainant have any type of business relationship with the Respondent. Finally, the name of the Respondent has no apparent connection to the Disputed Domain Names that would suggest that he operates a business under those Disputed Domain Names, nor is the Respondent making a legitimate noncommercial or fair use of the Disputed Domain Names. Moreover, the Respondent’s use of the Disputed Domain Names to resolve to websites with commercial links to third-party advertisements does not constitute a bona fide offering of goods or services or noncommercial fair use under the Policy. See Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415 (use of a domain name to post landing pages and pay-per-click links does not confer rights or legitimate interests in that domain name). In this case, the Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name. Accordingly, the second element of paragraph 4(a) of the Policy has been met by the Complainant. C. Registered and Used in Bad Faith This Panel finds that, based on the record, the Complainant has demonstrated the existence of the Respondent's bad faith pursuant to paragraph 4(b) of the Policy. First, the registration of a domain name that is identical or confusingly similar to a trademark by an entity that has no relationship to that mark may be sufficient evidence of bad faith. See Ebay Inc. v. Wangming,WIPO Case No. D2006-1107; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163. Second, the Panel finds that the Respondent had knowledge of the Complainant's rights in its ACTAVIS Mark when registering the Disputed Domain Names. The Respondent's knowledge of the Complainant's rights can be inferred from the Respondent's use of the ACTAVIS Mark to redirected to a landing page containing third party sponsored links related to pharmaceutical companies to convince (or confuse) customers that the Disputed Domain Names are affiliated with the Complainant. Thus, it is implausible that the Respondent did not know about the Complainant or its trademark rights when it registered the Disputed Domain Names years after the Complainant acquired trademark registrations in the ACTAVIS Mark. Third, at some point after the commencement of this proceeding, the Respondent took down the resolving pay-per-click page for its Accordingly, the third element of paragraph 4(a) of the Policy has been met by the Complainant. 6. 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, Lynda M. Braun
Sole Panelist
Date: May 8, 2020
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