Complainants are Actavis Group PTC ehf, Iceland, and Actavis Holdco US, INC., United States of America (“United States”), represented by SILKA AB, Sweden.
Respondent is Domain Admin, Privacy Protect, LLC (PrivacyProtect.org), United States / Vladimir Jonnas, United States. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (“Center”) on June 2, 2021. On June 2, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 3, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name that differed from that in the Complaint as well as providing other details of the registration. In a June 3, 2021 email communication to Complainants, the Center provided the registrant and contact information disclosed by the Registrar, and invited Complainants to submit an amendment to the Complaint. Complainants filed an amended Complaint on June 3, 2021. The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (“Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (“Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (“Supplemental Rules”). In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on June 3, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 23, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 11, 2021. The Center appointed Debra J. Stanek as the sole panelist in this matter on July 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 Complainants use the mark ACTAVIS in connection with pharmaceutical products and related goods. Complainant Actavis Group PTC ehf owns several registrations for ACTAVIS, including, among others, an Iceland registration (No. 963/2003) registered on November 28, 2003 and an European Union Trade Mark registration (No. 003615721) registered on January 16, 2006. Complainant Actavis Holdco US, INC. owns United States federal trademark registrations for ACTAVIS marks (No. 3845070 registered on September 7, 2010 and No. 4694086 registered March 3, 2015). Respondent registered the disputed domain name on August 3, 2019. The disputed domain name directs to a website that offers an array of pharmaceutical products, such as several brands of cough syrup (including Complainants’ ACTAVIS brand), and other drugs, such as marijuana and cocaine. 5. Parties’ Contentions A. Complainants Identical or Confusingly Similar Complainants are affiliates of Teva Pharmaceutical Industries Ltd. They develop, manufacture, and market generic pharmaceutical products, including cough syrup. Complainants are joint owners of the ACTAVIS mark and therefore wish to proceed with a consolidated complaint. As noted above, each of the Complainants owns one or more registrations for the ACTAVIS mark (as a word mark and in a stylized form) for generic pharmaceuticals and related goods in various jurisdictions. The disputed domain name includes the ACTAVIS mark in its entirety, along with the descriptive words “online store” and is therefore confusingly similar to the mark. Rights or Legitimate Interests Because the disputed domain name incorporates the well-known and distinctive ACTAVIS mark, it is difficult to foresee any justifiable use of the disputed domain name. The disputed domain name is not descriptive and does not identify any specific characteristics of any goods or services. Complainants have not authorized Respondent to use the ACTAVIS mark in the disputed domain name and Respondent has no other connection to Complainants or their businesses. Respondent is not authorized to sell Complainants’ products. Respondent is not commonly known by the name “Actavis,” as an individual, a business, or any other organization. The online store operated by Respondent under the disputed domain name is a “rogue internet pharmacy” used for illegal activity. “Products” offered include cocaine, Subutex, and other drugs that may not be openly sold. This unlawful use does not confer rights or legitimate interests in the disputed domain name. Registered and Used in Bad Faith It is inconceivable that Respondent did not know of Complainants’ well-known mark when registering the disputed domain name. The website associated with the disputed domain name purports to offer Complainants’ cough syrup, which is sold under the ACTAVIS mark. In addition, to Complainants’ ACTAVIS cough syrup, the website offers competing brands of cough syrup as well as illegal drugs. Respondent is using Complainants’ ACTAVIS mark to divert Internet users to Respondent’s website for Respondent’s commercial gain. Further, use of the ACTAVIS mark with the other illegal products that advertised creates the impression that those products are provided, sponsored, or otherwise recommended by Complainants. Finally, under these circumstances, Respondent’s use of a privacy service to shield its identity suggests bad faith. The contact page on Respondent’s website displays an address in the State of California in the United States. However, cocaine may not be legally possessed under California law, making it likely that the information is false. This is further supported by the fact that the Registrar is located in Asia, pricing its services in Malaysian currency. B. Respondent Respondent did not reply to Complainants’ contentions. 6. Discussion and Findings A. Procedural Matter: Multiple Complainants The Complaint identifies two Complainants: Actavis Group PTC ehf, Iceland, and Actavis Holdco US, INC., United States. The Complaint included evidence of trademark registrations owned by both Actavis Holdco US, INC. and Actavis Group PTC ehf. The Panel shares the consensus view on the question of whether more than one complainant may join a complaint. A related company, such as a subsidiary or parent to the owner of a mark, may be considered to have rights in a mark for purposes of a UDRP proceeding. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.4.1. Further, where one or more complainants have the same grievance against a respondent and it is equitable and procedurally efficient to do so, permitting the affiliated entities to file a consolidated complaint may be appropriate. See WIPO Overview 3.0, section 4.11.1. B. Substantive Matters To prevail, a complainant must prove, as to the disputed domain name, that: (i) It is identical or confusingly similar to a mark in which the complainant has rights. (ii) The respondent has no rights or legitimate interests in respect to it. (iii) It has been registered and is being used in bad faith. A respondent’s failure to respond to a complaint does not automatically result in a finding for the complainant. See WIPO Overview 3.0, section 4.3. A complainant continues to have the burden of establishing the required elements. The Panel may, however, draw inferences from a respondent’s default as it considers appropriate. See Rules, paragraph 14(b). A. Identical or Confusingly Similar Complainants have each established rights in the mark ACTAVIS by virtue of the evidence of their respective registrations. The disputed domain name includes the ACTAVIS mark in its entirety followed by the descriptive phrase “online store” and the generic Top-Level Domain “.com”. While the disputed domain name is not identical to Complainants’ mark, the Panel finds that the mark is clearly recognizable (excluding the Top-Level Domain), despite the addition of “online store”. See WIPO Overview 3.0, sections 1.7 and 1.8. The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainants have rights. B. Rights or Legitimate Interests The Panel shares the consensus view that a complainant may establish that a respondent has no rights or legitimate interests in respect of a domain name by making a prima facie showing. See WIPO Overview 3.0, section 2.1 (after prima facie showing, burden of production shifts to respondent). There is no reason to believe that Respondent is commonly known by the disputed domain name. It does not appear that Respondent’s use is either noncommercial or a fair use. Complainants have not authorized Respondent to use the ACTAVIS mark or to sell their products. It does not appear that Respondent is making use of the disputed domain name in connection with any bona fide offering. Complainants have satisfactorily established that the disputed domain name is being used to offer for sale (among other things), illegal pharmaceuticals. The Panel shares the consensus view that that use cannot confer rights or legitimate interests in a disputed domain name. WIPO Overview 3.0, sections 2.13.1 and 2.13.2. The Panel finds that Complainants have made a prima facie showing under this element. Respondent has not responded to the Complaint and has not rebutted that prima facie showing. The Panel concludes that Complainants have established that Respondent lacks any rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith Given the distinctive nature of the ACTAVIS mark, the fact that it was registered more than 15 years before the disputed domain name, and the fact that Respondent’s website purports to offer Complainants ACTAVIS cough syrup for sale, the Panel concludes that Respondent was well aware of Complainants and their mark and registered the disputed domain name with them in mind. The other facts and circumstances, including use of the website to sell illegal pharmaceuticals and other drugs, use of a privacy service1 , the lack of any plausible good faith use of the disputed domain name, combined Respondent’s failure to respond to the Complaint, also support a finding of bad faith. Under these circumstances, the Panel finds that Respondent registered and is using the disputed domain name 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 Debra J. Stanek 1 The Panel recognizes that there are legitimate uses of a privacy service. 2 The Complaint requests that the domain name be transferred to “Complainant” but does not specify which Complainant.
Sole Panelist
Date: August 5, 2021
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