Complainant is Actavis Holdco US, Inc., United States of America (“United States” or “US”), represented by SILKA AB, Sweden.
Respondent is See PrivacyGuardian.org, United States / James Compi, United States. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 13, 2020. On October 13, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On October 13, 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 Complainant on October 26, 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 October 27, 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 October 29, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 18, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 20, 2020. The Center appointed Colin O’Brien as the sole panelist in this matter on December 14, 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 Complainant develops, manufactures, and markets a broad line of generic pharmaceuticals, including both solid dosage and sterile dosage products. Complainant is a wholly owned subsidiary of Teva Pharmaceutical Industries Ltd, a global pharmaceutical company headquartered in Israel. Complainant is the owner of the following United States federal trademark registrations: - ACTAVIS (Registered on September 7, 2010, Registration Number 3845070); - ACTAVIS (Registered on March 3, 2015, Registration Number 4694086); and - ACTAVIS (Registered on August 19, 2014, Registration Number 4586490). UDRP decisions have recognized Complainant’s rights in its ACTAVIS mark including Actavis Holdco US, Inc. v. Whois Agent, Domain Protection Services, Inc. / Bryan Farajolah, Music Merchandise Addiction Mental Health Awareness,WIPO Case No. D2020-0656. The Disputed Domain Name was registered on August 4, 2020. 5. Parties’ Contentions A. Complainant The Disputed Domain Name directly incorporates Complainant’s registered trademark in its entirety. The addition of the descriptive term “plug4sale” reinforces the (false) association between the trademark and the Disputed Domain Name. The addition of the generic Top-Level-Domain (“gTLD”) “.com” does not differentiate the Domain Name from the trademark. There is no bona fide offering of goods or services where the Disputed Domain Name incorporates the ACTAVIS trademark which is not owned by Respondent. Respondent is not known by the name “actavis”. The distinctive name “Actavis” is not a name one would legitimately choose as a domain name without having specific rights to such name. Actavis is not a descriptive term serving to indicate specific characteristics of any goods or services. Respondent has not used the Disputed Domain Name for a bona fide offering of goods or services. The Disputed Domain Name is connected to a website featuring the ACTAVIS logo coupled with the “Plug4Sale” logo. The website located at the Disputed Domain Name claims to offer a relaxing drink called “LEGAL LEAN” (also known as purple drank) which Complainant does not want to be associated with. The website also features pop-up ads which state: “Buy Actavis Online – up to 45% Off.” Respondent is not known by the name “actavis” and Respondent wants to be associated with Complainant as the website bears Complainant’s logo. It is highly unlikely that Respondent was not aware of the registered rights Complainant owned and the value of said trademark, at the point of the registration of the Disputed Domain Name. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar Complainant has demonstrated it owns registered trademark rights in the ACTAVIS trademark in the United States. The addition of the descriptive term “plug4sale” does not prevent a finding of confusing similarity. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8. Accordingly, the disputed domain name is confusingly similar to a mark in which Complainant has rights. B. Rights or Legitimate Interests Complainant has presented a prima facie case that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name and has not at any time been commonly known by the Disputed Domain Name. The Disputed Domain Name resolves to a website that claims to offer Actavis products. This use does not satisfy the “Oki Data test” for legitimate interest in the Disputed Domain Name because Respondent does not appear to be selling only Actavis products. This website also appears to be selling other third party products (apparently counterfeit versions) of Xanax, Adderall and Oxycodone. Moreover, Respondent appears to be selling possibly counterfeit Actavis products. Further, Respondent’s website does not disclose the relationship with Complainant. See Oki Data Americas, Inc. v. Asdinc.com, Inc.,WIPO Case No. D2001-0903. The evidence indicates Respondent obtained the Disputed Domain Name years after Complainant had begun using the ACTAVIS mark on a worldwide basis, indicating that Respondent sought to piggy-back on the ACTAVIS mark in order to sell possibly counterfeit Actavis products as well as other third party (possibly counterfeit) products. After a complainant has made a prima facie case, the burden of production shifts to the respondent to present evidence demonstrating rights or legitimate interests in the domain name. See, e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455. Here, Respondent has provided no evidence of any rights or legitimate interests in the disputed domain name, rather the evidence suggests that it was registered to make an undue profit based on Complainant’s rights. See, e.g., Bottega Veneta SA v. ZhaoJiafei,WIPO Case No. D2013-1556. In the absence of any evidence rebutting Complainant’s prima facie case that Respondent’s lack of rights or legitimate interests in respect of the Disputed Domain Name, the Panel finds that Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith The Disputed Domain Name was registered many years after Complainant first registered and used its ACTAVIS trademark in the United States. There is no non-benign reason for Respondent to have registered the Disputed Domain Name containing the ACTAVIS trademark. The use of the Disputed Domain Name by Respondent is clearly in bad faith. The Disputed Domain Name resolves to a website that claims to offer for sale Actavis as well as other prescription drugs. Such use by Respondent possibly puts the public at risk by attempting to sell a potentially counterfeit or expired prescription drug that do not meet the manufacturing standards of Complainant. Moreover, the actions of Respondent in attempting to sell Complainant’s products could result in the public being misled as to the accuracy of the information provided or the origin, sponsorship, or association of the products offered or sold on Respondent’s website. See Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784. The Panel finds that the Disputed Domain Name has been registered and is being used in bad faith. 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, Colin O’Brien
Sole Panelist
Date: December 28, 2020
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