The Complainant is Actavis Holdco US, Inc, United States of America (“United States” and “US”), represented by SILKA AB, Sweden.
The Respondent is Mahfuz Akand, Software Bazar Bangladesh, Bangladesh. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 20, 2021. On March 22, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 23, 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 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 25, 2021. In accordance with the Rules, paragraph 5, the due date for Response was April 14, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 15, 2021. The Center appointed Cherise Valles as the sole panelist in this matter on April 22, 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 develops, manufactures, and markets a broad line of generic pharmaceuticals, including both solid dosage and sterile dosage products. On August 2, 2016, Teva Pharmaceutical Industries Ltd and Allergan plc announced that Teva had completed its acquisition of Allergan’s generics business (“Actavis Generics”). The Complainant is now an indirect wholly-owned subsidiary of Teva Pharmaceutical Industries Ltd, a leading global pharmaceutical company headquartered in Israel, and the world’s largest generic medicines producer. The Complainant is the owner of the registered trademark ACTAVIS as a word mark including in the United States where the Complainant is located. See, for example, the US trademark registration for ACTAVIS registered on September 7, 2010, with registration number 3845070 and US trademark registration for ACTAVIS registered on March 3, 2015, with registration number 4694086 and US trademark registration for ACTAVIS on August 19, 2014, with registration number 4586490. The trademarks were registered before the disputed domain name was registered. Previous UDRP decisions have recognized the Complainant’s rights in its ACTAVIS mark including in 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 The Complainant asserts that each of the elements enumerated in paragraph 4(a) of the Policy and the corresponding provisions in the Rules have been satisfied. In particular, the Complainant asserts that: - The disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. - The disputed domain name is confusingly similar to the Complainant’s registered Actavis trademarks, in light of the fact that it wholly incorporates the Complainant’s mark. The Respondent lacks rights or legitimate interests in the disputed domain name. - The Complainant states that the Respondent should be considered as having no rights or legitimate interests in the disputed domain name. The Complainant has never licensed or otherwise permitted the Respondent to use its trademarks or to register any domain name that included its trademarks. The disputed domain name has been registered and is being used in bad faith. - The Complainant asserts that the disputed domain name was registered and is being used in bad faith. The mere fact of registration of a domain name that is confusingly similar or identical to a famous trademark by an entity that has no relationship to that mark is itself evidence of bad faith registration and use. Furthermore, the Respondent’s fraudulent use of the disputed domain name is clear evidence of bad faith. The Complainant requests the Panel to issue a decision finding that the disputed domain name be transferred to the Complainant, in accordance with paragraph 4(i) of the Policy. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings The Policy provides specific remedies to trademark owners against registrants of domain names where the owner of the mark (a complainant) establishes each of the following elements: (i) the domain name is identical or confusingly similar to a trademark in which the complainant has rights; The Complainant has the burden of proof in establishing each of these elements. The Respondent has failed to file a Response in this proceeding. The Panel may draw appropriate inferences from the available evidence submitted by the Complainant. A. Identical or Confusingly Similar To prove this element, the Complainant must have trademark rights and the disputed domain name must be identical or confusingly similar to the Complainant’s trademark. The Complainant submits that the disputed domain name is confusingly similar to the trademark in which it has rights. The disputed domain name incorporates the ACTAVIS trademark in its entirety with the addition of the term “ltd”. Given the Complainant’s trademark registrations as detailed above, the Complainant has established its trade mark rights in the term “actavis” for the purposes of paragraph 4(a)(i) of the Policy. As stated in section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) “[w]here 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.” The Complainant’s trademark ACTAVIS is clearly recognizable as the leading element of the disputed domain name. It is well established in previous UDRP decisions that, where the relevant trademark is recognizable within the disputed domain name, the addition of other terms, such as “ltd”, would not prevent a finding of confusing similarity under the first element. See section 1.8 of the WIPO Overview 3.0. It is standard practice when comparing a disputed domain name to a complainant’s trademark not to take the extension into account. See WIPO Overview 3.0 at section 1.11.1, which states that the “applicable Top Level Domain (‘TLD’) in a domain name (e.g., ‘.com’, ‘.club’, ‘.nyc’) is viewed as a standard registration requirement and, as such, is disregarded under the first element of the confusing similarity test”. As noted by previous UDRP panels, the test for confusing similarity should be a comparison between the trademark and the domain name to determine the likelihood of confusion. See Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic,WIPO Case No. D2000-1698. In the light of the foregoing, the Panel finds that the disputed domain name Paragraph 4(c) of the Policy enumerates three non-exclusive ways in which a respondent may demonstrate rights or legitimate interests in a domain name (with “you” referring to the respondent): “[a]ny of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii): (i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) you (as an individual, business or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or (iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” The Respondent did not submit a Response or attempt to demonstrate any rights or legitimate interests in the disputed domain name, and the Panel draws inferences from this failure, where appropriate, in accordance with the Rules, paragraph 14(b). Previous UDRP panels have held that the complainant must establish a prima facie case that respondent lacks rights or legitimate interests in the disputed domain name in order to shift the burden of production to respondent. See The American Automobile Association, Inc. v. PrivacyProtect.org/ Domain Tech Enterprises/ and The American Automobile Association, Inc. v. PrivacyProtect.org/Tarun Kumar and The American Automobile Association, Inc. v. Publishier LLC,WIPO Case No. D2011-2202, noting that a complainant need only show a prima facie case that respondent lacks rights or legitimate interests in a disputed domain name in order to shift the burden of production to 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. The Complainant asserts that the Respondent is unable to invoke any of the circumstances set out in paragraph 4(c) of the Policy in order to demonstrate rights or legitimate interests in the disputed domain name. First, the Respondent cannot assert that, prior to any notice of this dispute, he was using, or had made demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services in accordance with paragraph 4(c)(i) of the Policy. There is no evidence suggesting that the Respondent made a bona fide offering of goods or services. Second, the Respondent is not commonly known by the name “Actavis”. The distinctive name registered by the Complainant is not a name one would legitimately choose as a domain name without having specific rights to such name. This name is certainly not a descriptive term serving to indicate specific characteristics of any goods or services. Third, the Respondent is not making legitimate noncommercial use of the domain name as the disputed domain name is not connected to an active website. Indeed, according to the Complainant, the Respondent registered the disputed domain name incorporating the Complainant’s well-known trademark, without any authorization and keeps the disputed domain name inactive. In light of the foregoing, the Panel finds that the Complainant has established an unrebutted prima facie case and concludes that paragraph 4(a)(ii) of the Policy is satisfied. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith: (i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; (ii) 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; (iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 its website or location. The term “bad faith” is “broadly understood to occur where a respondent takes unfair advantage of, or otherwise abuses, a complainant’s mark”. See WIPO Overview 3.0, section 3.1. The Complainant asserts that the disputed domain name was registered and was being used in bad faith. Paragraph 4(b) of the Policy lists four factors, which, in particular but without limitation, may be evidence of registration and use of a domain name in bad faith for the purposes of paragraph 4(a)(iii) of the Policy. Previous UDRP panels have found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. WIPO Overview 3.0, section 3.1.4. UDRP panels have held that the “registration of a well-known trademark as a domain name is a clear indication of bad faith itself”. See The Gap, Inc. v. Deng Youqian,WIPO Case No. D2009-0113. The Respondent has used the disputed domain name in bad faith. It has knowingly registered the disputed domain name that contains the trademark of the Complainant, in order to divert Internet users to the Respondent’s website. An indication that the disputed domain name was registered in bad faith is in the fact that the Respondent has most likely used false biodata when he registered the disputed domain name. The Complainant did not find any person known by the name Mahfuz Akand at the address indicated in the WhoIs records. As other UDRP panels have held, a respondent cannot escape a finding of use in bad faith when it parks a disputed domain name and when the surrounding circumstances indicate that the disputed domain name comprises another’s famous trademark without any plausible reason. See section 3.3 of the WIPO Overview 3.0. ACTAVIS is a registered trademark that is well-known internationally. It is highly unlikely that the Respondent was not aware of the registered trademark rights that the Complainant had in its trademark when he registered the disputed domain name. As a consequence, the Respondent should be considered to have registered and to be using the disputed domain name in bad faith. Accordingly, the Panel concludes that the Complainant has satisfied its burden of showing bad faith registration and use of the disputed domain name under 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 Cherise Valles
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name was registered and is being used in bad faith.
Sole Panelist
Date: May 4, 2021
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