The Complainant is Teva Pharmaceutical Industries Limited, Israel, represented by SILKA AB, Sweden.
The Respondent is Cindy Nicole Oporto Leal, Chile. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 19, 2021. On February 19, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 22, 2021, 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 sent an email communication to the parties in English and Spanish on March 11, 2021 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 name is Spanish. The Complainant submitted a request for English to be the language of the proceeding on March 15, 2021. The Respondent did not submit any communication regarding the language of the proceeding. 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 18, 2021. In accordance with the Rules, paragraph 5, the due date for Response was April 7, 2021. The Response was filed in Spanish with the Center on April 7, 2021. The Center appointed Edoardo Fano as the sole panelist in this matter on May 17, 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. 4. Factual Background The Complainant is Teva Pharmaceutical Industries Limited, an Israeli company operating in the pharmaceutical field and owning several trademark registrations for TEVA, among which: - Chilean Trademark Registration No. 977056 for TEVA, registered on December 11, 2012. The Complainant operates on the Internet at the main website “www.tevapharm.com”, as well as at other websites, among which “www.tevapharm.cl”. The Complainant provided evidence in support of the above. According to the WhoIs records, the disputed domain name was registered on June 23, 2020 and the website at the disputed domain name is inactive. However, the Complainant was able to provide evidence that the website at the disputed domain name was looking like a Complainant’s official website by reproducing the Complainant’s trademark and promoting purported Complainant’s products. 5. Parties’ Contentions A. Complainant The Complainant states that the disputed domain name Moreover, the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name since it is not commonly known by the disputed domain name and it is not making either a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name, since when the website at the disputed domain name was active it was looking like a Complainant’s official website selling false products. The Complainant submits that the Respondent has registered the disputed domain name in bad faith, since the Complainant’s trademark TEVA is distinctive and internationally known. Therefore, the Respondent targeted the Complainant’s trademark at the time of registration of the disputed domain name and the Complainant contends that both the previous use as a Complainant’s official website and the actual passive holding of the disputed domain qualifies as bad faith registration and use. B. Respondent The Respondent agrees to the transfer of the disputed domain name to the Complainant. 6. Discussion and Findings 6.1 Language of Proceedings According to paragraph 11(a) of the Rules, the Panel has decided that the language of the proceeding will be English. The language of the Registration Agreement is Spanish, however, the Panel considers appropriate to conduct the proceeding in a language other than that of the Registration Agreement, since the request to translate the Complaint into Spanish would be an unfair burden as well as an unnecessary delay for the Complainant. Furthermore, the Respondent received the case-related communications from the Center both in Spanish and English, but did not comment to the Complainant’s request to use English, and submitted a reply in Spanish consenting to the remedy requested by the Complainant. See section 4.5 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) 6.2 Substantive Issues Paragraph 4(a) of the Policy lists three elements, which the Complainant must satisfy in order to succeed: (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 in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith. A. Consent to transfer According to the Response, the Respondent appears to be willing to reach an agreement for the transfer of the disputed domain name. Section 4.10 of the WIPO Overview 3.0 considers the following possibilities for the Panel to issue a decision on cases involving a respondent’s informal or unilateral consent for the transfer of the disputed domain name: “Where parties to a UDRP proceeding have not been able to settle their dispute prior to the issuance of a panel decision using the ‘standard settlement process’ described above, but where the respondent has nevertheless given its consent on the record to the transfer (or cancellation) remedy sought by the complainant, many panels will order the requested remedy solely on the basis of such consent. In such cases, the panel gives effect to an understood party agreement as to the disposition of their case (whether by virtue of deemed admission, or on a no-fault basis). In some cases, despite such respondent consent, a panel may in its discretion still find it appropriate to proceed to a substantive decision on the merits. Scenarios in which a panel may find it appropriate to do so include (i) where the panel finds a broader interest in recording a substantive decision on the merits – notably recalling UDRP paragraph 4(b)(ii) discussing a pattern of bad faith conduct, (ii) where while consenting to the requested remedy the respondent has expressly disclaimed any bad faith, (iii) where the complainant has not agreed to accept such consent and has expressed a preference for a recorded decision, (iv) where there is ambiguity as to the scope of the respondent’s consent, or (v) where the panel wishes to be certain that the complainant has shown that it possesses relevant trademark rights.” In the present case, the Panel finds appropriate to issue a decision on the merits, noting that the Complainant is not accepting the Respondent’s consent for the transfer and it is entitled to what it has paid for, and considering the way the disputed domain name had been used, consisting in a clear case of cybersquatting. B. Identical or Confusingly Similar The Panel finds that the Complainant is the owner of the trademark TEVA both by registration and acquired reputation and that the disputed domain name Regarding the addition of the word “laboratorio” (a dictionary term meaning “laboratory” in Spanish), the Panel notes that it is now well established that the addition of terms or letters to a domain name does not prevent a finding of confusing similarity between the disputed domain name and the trademark (see, e.g., Aventis Pharma SA., Aventis Pharma Deutschland GmbH v. Jonathan Valicenti,WIPO Case No. D2005-0037; Red Bull GmbH v. Chai Larbthanasub,WIPO Case No. D2003-0709; America Online, Inc. v. Dolphin@Heart,WIPO Case No. D2000-0713). The addition of the word “laboratorio” does not therefore prevent the disputed domain name from being confusingly similar to the Complainant’s trademark. It is also well accepted that a generic Top-Level Domain (“gTLD”), in this case “.com”, may be ignored when assessing the confusing similarity between a trademark and a domain name (see WIPO Overview 3.0, section 1.11). The Panel finds that the Complainant has therefore met its burden of proving that the disputed domain name is confusingly similar to the Complainant’s trademark, pursuant to the Policy, paragraph 4(a)(i). C. Rights or Legitimate Interests The Respondent did not reply to the Complainant’s contentions and agreed to the transfer of the disputed domain name to the Complainant. The Complainant in its Complaint and as set out above has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. It asserts that the Respondent is not using the disputed domain name for a legitimate noncommercial or fair use or in connection with a bona fide offering of goods or services. The prima facie case presented by the Complainant is enough to shift the burden of production to the Respondent to demonstrate that it has rights or legitimate interests in the disputed domain name. However, the Respondent has not presented any evidence of any rights or legitimate interests it may have in the disputed domain name, and the Panel is unable to establish any such rights or legitimate interests on the basis of the evidence in front of it. In fact, the Respondent agreed to the transfer of the disputed domain name to the Complainant, which confirms the Panel’s finding that the Respondent does not have any rights or legitimate interests in respect of the disputed domain name. Moreover, the Panel finds that the composition of the disputed domain name carries a risk of implied affiliation. See WIPO Overview 3.0, section 2.5.1. The Panel therefore finds that paragraph 4(a)(ii) of the Policy has been satisfied. D. Registered and Used in Bad Faith Paragraph 4(b) of the Policy provides that “[…] for the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, 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: (i) circumstances indicating that [the Respondent has] registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or (ii) that [the Respondent has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [the Respondent has] engaged in a pattern of such conduct; or (iii) that [the Respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) that by using the domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the Respondent’s] website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the Respondent’s] website or location or of a product or service on [the Respondent’s] website or location”. Regarding the registration in bad faith of the disputed domain name, the reputation of the Complainant’s trademark TEVA in the pharmaceutical field is clearly established and the Panel finds that the Respondent likely knew of the Complainant and deliberately registered the disputed domain name, especially because within the disputed domain name the word “laboratorio”, a dictionary term meaning “laboratory” in English and referring to the Complainant’s business field, is added to the Complainant’s trademark TEVA. As regards the use in bad faith of the disputed domain name, pointing at present to an inactive website, the Panel considers that bad faith may exist even in cases of so-called “passive holding”, as found in the landmark UDRP decision Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. In the circumstances of this case, the Panel finds that such passive holding amounts to bad faith, also considering the previous use of the disputed domain name for a website purporting to be the Complainant’s official website. The Panel finds that the Complainant has presented evidence to satisfy its burden of proof with respect to the issue of whether the Respondent has registered and is using the disputed domain name in bad faith. The Panel therefore finds that paragraph 4(a)(iii) of the Policy has been satisfied. 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, Edoardo Fano
Sole Panelist
Date: May 28, 2021
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