The Complainant is Teva Pharmaceutical Industries Limited, Israel, represented by SILKA AB, Sweden.
The Respondent is Redacted for Privacy, 1&1 Internet Inc, United States of America / Marco Columbus, TPUK, United States of America.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 26, 2021. On August 26, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 31, 2021, 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 the Complainant on September 3, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on September 6, 2021.
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 the Respondent of the Complaint, and the proceedings commenced on September 8, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 28, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 18, 2021.
The Center appointed Rodrigo Azevedo as the sole panelist in this matter on October 25, 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 BackgroundThe Complainant is a pharmaceutical company - one of the largest generic medicines producers in the world - that operates under the trademark TEVAPHARM and was established in 1901.
The trademark TEVAPHARM was registered by the Complainant in several regions of the world, including in the United Kingdom (registration number UK00003577956, obtained on May 21, 2021) and in the European Union (registration number 018285645, obtained on January 9, 2021).
The Complainant is also the holder of the domain names
The Respondent registered the disputed domain name
The Complainant makes the following contentions:
- The disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. The trademark TEVAPHARM is clearly recognizable in the disputed domain name. The addition of the country identifier “uk” only reinforces the (false) association between the trademark and the disputed domain name. The addition of the Top Level Domain (“TLD”) “.com” does not differentiate the disputed domain name from the Complainant’s trademark.
- The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent has not made demonstrable good faith preparations to use the disputed domain name in connection with a good faith offering of goods or services. The disputed domain name resolves to an inactive site. Bearing in mind that the disputed domain name solely comprises the Complainant’s TEVAPHARM mark with the addition of the letters “uk”, and the fact that “tevapharm” is clearly associated with the Complainant and its activities, the Complainant contends that the disputed domain name seeks to capitalize the reputation and goodwill of the TEVAPHARM mark. Therefore, it is clear that the disputed domain name carries a risk of implied affiliation with the Complainant and cannot constitute fair use.
- The disputed domain name was registered and is being used in bad faith. The Complainant’s trademark TEVAPHARM and its domain name
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsParagraph 4(a) of the Policy provides that in order to be entitled to a transfer of the disputed domain name, a complainant shall prove the following three elements:
(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. Identical or Confusingly SimilarAnnex 6 to the Complaint shows trademark registrations for TEVAPHARM obtained by the Complainant at least in January 2021. The Company was established in 1901 and its official domain name
The disputed domain name differs from the Complainants’ trademark TEVAPHARMA merely by the addition of the suffix “uk” (common acronym for the United Kingdom), as well as the generic TLD “.com”.
Previous UDRP decisions have found that the mere addition of geographical terms to a trademark in a domain name does not prevent a finding of confusing similarity. This has been held in many UDRP cases (see, e.g., Inter-IKEA Systems B.V. v. Evezon Co. Ltd.,WIPO Case No. D2000-0437; The British Broadcasting Corporation v. Jaime Renteria,WIPO Case No. D2000-0050; Volvo Trademark Holding AB v. SC-RAD Inc.,WIPO Case No. D2003-0601; Wal-Mart Stores, Inc. v. Lars Stork,WIPO Case No. D2000-0628; America Online, Inc. v. Dolphin@Heart,WIPO Case No. D2000-0713; AltaVista Company v. S. M. A., Inc.,WIPO Case No. D2000-0927).
It is also already well established that the addition of a generic TLD such as “.com” is typically irrelevant when determining whether a domain name is confusingly similar to a complainant’s trademark.
As a result, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademarks, and that the Complainant has satisfied the first element of the Policy.
B. Rights or Legitimate InterestsParagraph 4(c) of the Policy provides some examples without limitation of how a respondent can demonstrate a right or legitimate interest in a domain name:
(i) before receiving any notice of the dispute, the respondent used or made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name; or
(iii) the respondent is 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 at issue.
Based on the Respondent’s default and on the prima facie evidence in the Complaint, the Panel finds that the above circumstances are not present in this particular case and that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant has not licensed or authorized the usage of its trademarks to the Respondent, and it does not appear from the present record that the Respondent is commonly known by the disputed domain name.
The Panel also notes that the present record provides no evidence to demonstrate the Respondent’s intent to use or to make preparations to use the disputed domain name in connection with a bona fide offering of goods or services. Indeed, there is no active website linked to the disputed domain name and the Respondent has not answered the Complaint.
Consequently, the Panel is satisfied that the Respondent has no rights or legitimate interests in the disputed domain name, and the Complainant has proven the second element of the Policy.
C. Registered and Used in Bad FaithParagraph 4(b) of the Policy states that the following circumstances in particular, but without limitation, shall be evidence of registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or 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 documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent 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) 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 its website or location or of a product or service on its website or location.
When the disputed domain name was registered by the Respondent (in August 2021), the trademark TEVAPHARM was already directly connected to the Complainant’s pharmaceutical products.
Besides the generic TLD “.com”, the disputed domain name is comprised of the Complainant’s trademark TEVAPHARM and the common acronym for the United Kingdom (“uk”). The Respondent has not provided any justification for the registration of a domain name containing a third-party trademark and a reference to such geographic indication.
Therefore, the Panel concludes that it would not be feasible to consider that the Respondent - at the time of the registration of the disputed domain name - could not have been aware of the Complainant’s trademark, as well as that the adoption of the expression “tevapharmuk” could be a mere coincidence.
Currently, there is no active website linked to the disputed domain name, but this is not enough to prevent the Panel’s finding that the disputed domain name is being used in bad faith.
In the Panel’s view, the circumstances that the Respondent is, (a) not presently using the disputed domain name; (b) not indicating any intention to use it; and (c) not at least providing justifications for the registration of a domain name containing third-party trademark, certainly cannot be used in benefit of the Respondent in the present case.
Accordingly, the Panel finds that the disputed domain name was registered and is being used in bad faith, and the Complainant has also satisfied the third element of the Policy.
7. DecisionFor 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
Rodrigo Azevedo
Sole Panelist
Date: November 11, 2021