WIPO Domain Name Decision D2020-1657 for producto-laboratoriotevaargentina.com

WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Teva Pharmaceutical Industries Limited v. Felipe Gamboa / Francisco Ponse / Cindy Nicole Oporto Leal Case No. D2020-1657 1. The Parties

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

The Respondent is Felipe Gamboa, Argentina / Francisco Ponse, Chile / Cindy Nicole Oporto Leal, Chile. 2. The Domain Names and Registrars

The disputed domain names , , and are respectively registered with 10dencehispahard, S.L., Soluciones Corporativas IP, LLC and Hosting Concepts B.V. d/b/a Openprovider (the “Registrar”). 3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”), in connection with the domain names and , on June 22, 2020. On June 25, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the two domain names and . On June 26 and July 17, 2020, the Registrars transmitted by email to the Center their 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 July 17, 2020 providing the registrant and contact information disclosed by the Registrar, inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on July 20, 2020.

The Center sent an email communication to the parties in English and Spanish on July 24, 2020 regarding the language of the proceeding, as the Complaint had been submitted in English and the language of the registration agreement for the disputed domain names was, for , English; and for , Spanish. The Complainant submitted a request for English to be the language of the proceeding on July 27, 2020. The Respondents did not submit any communication regarding the language of the proceeding.

Further to a request from the Complainant, the proceedings were suspended on July 30, 2020; and settled on August 20, 2020 for the domain name . Pursuant to the Complainant’s Termination Request on August 25, 2020, the Center notified the dismissal of the proceeding with regard to this domain name on September 1, 2020.

Further to a request from the Complainant on August 18, 2020, the disputed domain names and were included in the Complaint.

On August 20, 2020, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names and . On August 21, 2020, the Registrars transmitted by email to the Center their verification response disclosing the 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, in copy to the Respondents, on September 1, 2020, providing the registrant and contact information disclosed by the Registrars and inviting the Complainant to submit an amendment to the Complaint and possible arguments to support the request for consolidation of the disputed domain names. In reply to such communication, the registrant of sent an email to the Center in Spanish, on September 1, 2020, indicating that it did not understand what was communicated (“Estimados, no entiendo lo que quieren decir”). Following the Center’s reply, on the same day, in both English and Spanish, the Respondent sent an additional email communication to the Center indicating to have registered the disputed domain name on behalf of a client. The Complainant filed its arguments for consolidation on September 2, 2020.

The Center sent an email communication to the parties in English and Spanish on September 9, 2020 regarding the language of the proceeding, as the Complaint has been submitted in English and the language of the registration agreement for the disputed domain names and added to the Complaint were, respectively, Spanish and English. The Complainant submitted a request for English to be the language of the proceeding on September 14, 2020. The Respondents did not submit any communication regarding the language of the proceeding.

The Center verified that the Complaint together with the amended 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 September 16, 2020. In accordance with the Rules, paragraph 5, the due date for Response was October 6, 2020. The Respondents did not submit any formal response. Accordingly, the Center notified the Commencement of Panel Appointment on October 13, 2020. The registrant of sent an email communication in Spanish to the Center, on October 21, 2020, indicating that it was willing to transfer the disputed domain name to the Complainant. On October 23, 2020, the Complainant acknowledged receipt of such communication indicating to the parties that, should the parties wished to explore settlement options, the Complainant should have submitted a request for suspension by October 30, 2020. However, no request for suspension was submitted.

The Center appointed Luca Barbero as the sole panelist in this matter on November 5, 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.

In accordance with paragraph 10(c) of the Rules, the due date for Decision was extended to December 21, 2020. 4. Factual Background

Established in 1901, the Complainant is a leading global pharmaceutical company and one of the world’s largest generic medicines producer, being active in over 60 countries and employing approximately 45,000 people worldwide.

The Complainant has provided evidence of ownership of trademarks consisting of, or comprising TEVA, including the following:

- Argentinian trademark registration No. 2741796 for TEVA (word mark), filed on February 13, 2015 and registered on July 13, 2015, in international class 5;

- Argentinian trademark registration No. 2767873 for TEVA (figurative mark), filed on June 10, 2015 and registered on November 3, 2015 in international class 5;

The Complainant is also the owner of the domain name , registered on June 14, 1996 and used by the Complainant to promote its products under the trademark TEVA.

The disputed domain names , , and were registered, respectively, on June 8, 2020, June 23, 2020, and June 27, 2020. The disputed domain name currently resolves to a blank page whilst the other two disputed domain names are not pointed to any active web page. However, based on the screenshots provided by the Complainant, which have not been challenged by the Respondents, the disputed domain names and were previously pointed to active websites displaying the TEVA trademarks and promoting purported TEVA products. 5. Parties’ Contentions A. Complainant

The Complainant contends that disputed domain names , , and are confusingly similar to the trademark TEVA in which the Complainant has rights, as they all reproduce the trademark in its entirety with the mere addition of the descriptive term “laboratorio” (meaning “laboratory”) in all three cases, the generic word “product” in one of the three disputed domain names and the geographical indicator “Argentina” in the case of two out of three disputed domain names, as well as the generic Top-Level Domain (“gTLD”) “.com”.

With reference to rights or legitimate interests in respect of the disputed domain names, the Complainant states that the Respondents are not commonly known by the disputed domain names, and that the Respondents’ selection of the disputed domain names including the trademark TEVA is not incidental since such trademark is not a descriptive term serving to indicate specific characteristics of any goods or services.

The Complainant further states that the circumstance that the three disputed domain names currently resolve to inactive websites, proves that the Respondents have not used, or made preparations to use, the disputed domain names in connection to any bona fide offering of goods or services or any legitimate noncommercial or fair use.

With reference to the bad faith requirement, the Complainant underlines that it is highly unlikely that the Respondents were unaware of the Complainant’s name and trademark, as the disputed domain names have no other purpose than to create an association with the Complainant, its trademarks and products. The Complainant also highlights that the disputed domain names and were pointed, before they were deactivated pursuant to the Complainant’s activities, to active websites recalling the Complainant’s official website, by publishing the TEVA trademark and promoting purported TEVA products.

As to , the Complainant highlights that it was the last of the disputed domain names registered and that no content was ever published in connection with it. In this respect, the Complainant states that the “most natural explanation to this is likely that the Complainant has tried to remove content from the two other sites and succeeded so the respondent is presumably holding off with adding content on the last name”.

The Complainant further submits that the use of privacy shields to conceal the Respondents’ identity suggests that a motive for using a domain privacy service in this instance has been to increase the difficulty for the Complainant of identifying the actual domain holders, which does not reflect a good faith behavior. The Complainant concludes that there is no way in which the disputed domain names could be used legitimately by the Respondents and that, since the disputed domain names could be activated at any time by the Respondents, the Respondents should be considered to have registered and be using the disputed domain names in bad faith. B. Respondents

In response to the Complaint, communications were filed with the Center only by the registrant of which, on September 1, 2020, indicated to have registered the disputed domain name on behalf of a third party that had not been using it for more than two months, and confirmed its availability to delete the disputed domain name. On September 21, 2020, the same registrant confirmed its consent to the transfer or cancellation of the disputed domain name. 6. Discussion and Findings

According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

(i) that the disputed domain names registered by the Respondents are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) that the Respondents have no rights or legitimate interests in respect of the disputed domain names; and

(iii) that the disputed domain names have been registered and are being used in bad faith. 6.1 Preliminary procedural issues: addition of domain names prior to Complaint notification, Consolidation of Respondents, and language of proceeding.

As highlighted in the Procedural History, only the disputed domain name was included in the original Complaint, whilst the disputed domain names and were added at a later stage, before the Center’s notification of the Complaint.

As indicated in Section 4.12.1 of the WIPO Overview 3.0, “As a general rule, domain names held by the same registrant(s) may be added to a complaint before notification to the respondent(s)/formal commencement of the relevant proceeding. Particularly where the WhoIs-listed registrant is a privacy or proxy service, on receipt of confirmation of the underlying registrant identity from the registrar relayed by the WIPO Center to the complainant, a complainant may wish to add other relevant domain names held by the same registrant to its complaint. In the event proposed additional domain names involve marks not invoked in the original complaint, the complainant would be required to show relevant trademark rights corresponding to the new domain names. At the same time, the second and third UDRP elements may be updated where appropriate or applicable”.

In the case at hand, the identity of the registrants of the disputed domain names was – and still is – not disclosed in the public WhoIs records. Based on the Center’s verifications with the concerned Registrars:

i) the disputed domain name , registered on June 8, 2020 via the registrar 10dencehispahard, S.L., with a registration agreeement in Spanish, is in the name of Felipe Gamboa, based in Argentina;

ii) the disputed domain name , registered on June 23, 2020 via the registrar Soluciones Corporativas IP, LLC, with a registration agreement in Spanish, is in the name of Cindy Nicole Oporto Leal, based in Chile;

iii) the disputed domain name , registered on June 27, 2020 via the registrar Hosting Concepts B.V. d/b/a Openprovider, with a registration agreement in English, is in the name of Francisco Ponse, based in Chile.

With reference to the consolidation of multiple respondents in a single UDRP proceeding, Section 4.11.2 of the WIPO Overview 3.0 states that: “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., or ), (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).”

In order to substantiate its consolidation request, the Complainant submitted the following arguments:

i) all the disputed domain names incorporate the generic term “laboratorio”, hence the domain names share a similar pattern;

ii) all the disputed domain names target the same trademark TEVA;

iii) all the disputed domain names were registered in close proximity, i.e. during the month of June 2020;

iv) two of the disputed domain names, and , were at one point connected to active websites operated in Spanish language, whilst , which was the last registered disputed domain name, was not pointed to an active website likely because the Complainant has successfully deactivated the websites previously available at the disputed domain names and and, therefore, the registrant is presumably holding off with adding content on the last disputed domain name.

The Panel finds that the Complainant has failed to demonstrate that the three disputed domain names are under common control. Indeed, as highlighted in the information provided by the concerned Registrars to the Center, although the disputed domain names were registered within the same month and follow the same pattern, by encompassing the trademark TEVA along with the generic term “laboratorio”, they were registered, through different registrars, in the name of different individuals having no evident commonalities.

Moreover, notwithstanding the fact that the disputed domain names and were pointed to websites featuring the trademark TEVA and promoting purported TEVA products, they are registered in the name of individuals located in different countries, i.e. Argentina and Chile, respectively, and no evidence of possible identical or similar contact information available on the correspondent websites has been provided. As to the disputed domain name , which has not been used in connection with an active website according to the records, the sole commonality with one of the other disputed domain names, namely , is the fact that the registrant is located in the same country.

In view of the foregoing, the Panel declines to consolidate the disputes against the three named registrants of the disputed domain names in a single UDRP proceeding and will decide with respect only to one of the disputed domain names.

As an additional procedural factor that the Panel deems appropriate to consider in the process of selecting the disputed domain name in connection of which the Decision should be rendered, the Panel notes that the language of the Registration Agreement for two of the disputed domain names, namely and , is Spanish, whilst for one of the disputed domain names, i.e. , is English. The Complaint and the subsequent amendments were filed in English and the Complainant requested that the proceeding be conducted in English. The registrant of , however, appears not to understand English based on the communications sent to the Center, in Spanish.

In exercising its powers according to paragraphs 10 of the Rules, in order to ensure that the administrative proceeding takes place with due expedition, ensuring anyway the parties are treated with equality and that each party is given a fair opportunity to present its case, the Panel deems appropriate to issue its Decision in English in connection with the disputed domain name , without prejudice to the possibility for the Complainant to file new Complaints with respect to the other two domain names should the respective owners not be available to transfer the domain names to the Complainant after the end of this proceeding.

References made, in the paragraphs hereinafter, to “the Respondent” shall thus be read as referred to the registrant of the disputed domain name . 6.2. Substantive Issues A. Identical or Confusingly Similar

The Panel finds that the Complainant has established rights over the trademark TEVA based on the trademark registrations cited under section 4 above and the related trademark details submitted as annex 6 to the Complaint.

It is well accepted that the first element functions primarily as a standing requirement, and that the threshold test for confusing similarity involves a reasoned but relatively straightforward comparison between a complainant’s trademark and the disputed domain names to assess whether the trademark is recognizable within the disputed domain name (section 1.7 of the WIPO Overview 3.0).

Moreover, where the relevant trademark is recognizable within a disputed domain name, the addition of generic, descriptive or geographical terms does not prevent a finding of confusing similarity under the first element (section 1.8 of the WIPO Overview 3.0).

The disputed domain name reproduces the trademark TEVA in its entirety, in combination with the terms “laboratorio” (“laboratory”) and “producto” (“product”), a dash and the geographical term “Argentina”, besides the gTLD “.com”, which are all not sufficient to prevent a finding of confusing similarity.

In view of the above, the Panel finds that the Complainant has proven that the disputed domain name is confusingly similar to a trademark in which the Complainant has established rights in accordance with paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests

It is well established that the burden of proof lies on the complainant. However, satisfying the burden of proving a lack of the respondent’s rights or legitimate interests in respect of the domain name according to paragraph 4(a)(ii) of the Policy is potentially onerous, since proving a negative can be difficult considering such information is often primarily within the knowledge or control of the respondent.

Accordingly, in line with previous UDRP decisions, it is sufficient that the complainant shows a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name in order to shift the burden of production on the respondent. If the respondent fails to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy or on any other basis, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy

In the case at hand, the Respondent, by not filing a Response, has failed to invoke any circumstance that could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name.

According to the evidence on record, there is no relationship between the Complainant and the Respondent, and the Complainant has not authorized the Respondents to register or use its trademark or the disputed domain name.

Moreover, there is no element from which the Panel could infer a Respondent’s right over the disputed domain name, or that the Respondent, whose name disclosed in the Registrar’s WhoIs records for the disputed domain name is Francisco Ponse, might be commonly known by the disputed domain name.

Furthermore, there is no evidence on records that the Respondent, which appears to have simply passively held the disputed domain name, might have used it in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant’s trademark.

Therefore, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests in the disputed domain name according to paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy requires that the Complainant prove that the disputed domain name was registered and is being used by the Respondent in bad faith.

As to the bad faith at the time of the registration, the Panel notes that, in light of the amount of advertising and sales of Complainant’s products worldwide and the well-known character of the Complainant’s trademark in the pharmaceutical sector, the Respondent was or ought to be well aware of the Complainant’s trademark when it decided to register the disputed domain name.

Moreover, in view of the notoriety of the Complainant’s trademark, the Panel believes that the Respondent acted in opportunistic bad faith at the time of registration, since the disputed domain name is so obviously connected with the Complainant that its selection by the Respondent, which has no connection with the Complainant, suggests the disputed domain names were registered with a deliberate intent to create an impression of an association with the Complainant.

As indicated above, the disputed domain name has not been pointed to an active website. It is well established that passive holding of a domain name could amount to bad faith under certain circumstances as decided, i.a., in Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. In the case at hand, in view of i) the Respondent’s registration of a domain name encompassing the Complainant’s well-known trademark; ii) the absence of any documented rights or legitimate interests of the Respondent in the disputed domain name; iii) the Respondent’s failure to respond to the Complaint, the Panel finds that the current passive holding of the disputed domain name by the Respondent does not prevent a finding of bad faith registration and use.

Furthermore, as stated in section 3.6 of WIPO Overview 3.0, “Where it appears that a respondent employs a privacy or proxy service merely to avoid being notified of a UDRP proceeding filed against it, panels tend to find that this supports an inference of bad faith; a respondent filing a response may refute such inference. Panels additionally view the provision of false contact information (or an additional privacy or proxy service) underlying a privacy or proxy service as an indication of bad faith. In some cases, particularly where the respondent does not avail itself of the opportunity to respond to claims based on the timing of the registration of the Disputed Domain Name (such as a materially relevant change in underlying registrant), panels have been prepared to infer that the use of a privacy or proxy service may seek to mask the timing of the respondent’s acquisition of the domain name. Panels have also viewed a respondent’s use of a privacy or proxy service which is known to block or intentionally delay disclosure of the identity of the actual underlying registrant as an indication of bad faith”.

In the case at hand, the Panel notes that the Respondent employed a privacy service and that the postal address recorded in the Registrar’s WhoIs records appears to be fictitious as repeated unsuccessful delivery attempts were made at that address by the courier entrusted by the Center with the notification of the Written Notice.

The Panel considers the potentially incomplete or false information provided by the Respondent in the WhoIs records as an additional circumstance evidencing the bad faith of the Respondent, concurring with the views expressed inter alia in Steelcase Development Corporation v. Admin, Domain,WIPO Case No. D2005-1352, stating that the use of false contact information by the Respondent is a further indication of bad faith (Wachovia Corporation v. Peter Carrington,WIPO Case No. D2002-0775). See, along these lines, Sud‑Chemie AG v. tonsil.com,WIPO Case No. D2000-0376, finding bad faith use and registration where Complainant “was unsuccessful in its attempts to contact Respondent by using the contact details in the Registrar’s registry”.

Therefore, the Panel finds that the Complainant has also proven that the Respondent registered and is using the disputed domain name in bad faith according to 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 be transferred to the Complainant.

Luca Barbero
Sole Panelist
Date: December 22, 2020

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