The Complainants are Actavis Group PTC ehf, Iceland and Actavis Holdco US, INC., United States of America (“United States”), represented by SILKA AB, Sweden.
The Respondent is Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf, Iceland / Terry Tatang, bagp import and export pty ltd, South Africa.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 27, 2021. On August 27, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 27, 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 2, 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 amended Complaint on September 6, 2021.
The Center verified that the Complaint together with the amended 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 7, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 27, 2021. The Center received an email communication from the Respondent on September 16, 2021 requesting a suspension of the proceeding to explore settlement talks. The Center invited the Complainant to submit a request for suspension accordingly but the Complainant indicated that it wished to proceed with the dispute. The Center notified the commencement of Panel appointment process on September 28, 2021.
The Center appointed Steven A. Maier as the sole panelist in this matter on October 5, 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 Actavis Group PTC ehf is a company registered in Iceland. The Complainant Actavis Holdco US, Inc is a company registered in New Jersey, United States. Both Complainants are indirect subsidiaries of Teva Pharmaceutical Industries Limited and, according to the Complainants’ submissions, are the joint owners of trademark registrations for the mark ACTAVIS as detailed further below.
The Complainants are in the business of the acquisition, development, manufacturing and marketing of branded pharmaceuticals, generic and over-the counter-medicines and biological products.
The Complainants are the owners of registrations for the trademark ACTAVIS in numerous territories worldwide. Those registrations include, for example, Iceland trademark number 963/2003 for the word mark ACTAVIS, registered on November 28, 2003 and European Union Trade Mark number 003615721 for the word mark ACTAVIS, registered on January 16, 2006.
The disputed domain name was registered on July 28, 2021.
The disputed domain name does not appear to have resolved to any active website.
5. Parties’ Contentions A. ComplainantThe Complainants submit that they have traded under the ACTAVIS name and mark since at least 2003 and that they have a commercial presence in over 100 countries. They submit that the mark ACTAVIS is distinctive in nature and has acquired a level of public recognition which widely associates the mark with the Complainants and their products.
The Complainants submit that the disputed domain name is confusingly similar to their ACATVIS trademark. They contend that their trademark ACTAVIS is clearly recognizable within the disputed domain name and that the addition of the descriptive terms “pharma” and “health” does not prevent a finding of confusing similarity between the disputed domain name and that trademark.
The Complainants submit that the Respondent has no rights or legitimate interests in respect of the disputed domain name. They contend that the Respondent has no rights to the ACTAVIS trademark and has not commonly been known by a name which corresponds to the disputed domain name. They note that the Respondent has made no use of the disputed domain name. They submit that the disputed domain name, combining the Complainants’ mark ACTAVIS with the terms “pharma” and “health”, can only have been registered with knowledge of the Complainants’ trademark and business and with the intention of taking unfair advantage of the Complainants’ goodwill by misrepresenting a connection between the disputed domain name and the Complainants.
The Complainants submit that the disputed domain name was registered and is being used in bad faith. They repeat that the Respondent can only have registered the disputed domain name with knowledge of the Complainants’ trademark, and that the registration of a domain name which is confusingly similar to a widely-known trademark is in itself evidence of bad faith. The Complainants submit that, given the worldwide reputation of their distinctive ACTAVIS mark, the Respondent can have registered the disputed domain name only for the purpose of capitalizing on consumer confusion for financial gain.
The Complainants request the transfer of the disputed domain name.
B. RespondentThe Respondent did not file a formal Response in this proceeding. However, the Respondent’s email to the Center dated September 16, 2021 stated the following:
“would like to suspend the present dispute to explore settlement talks. actavispharma.health is a blogger to promote actavis brand and use the blog for adsense. If we may ask, are there a[n]y violations in this?”
6. Discussion and FindingsIn order to succeed in the Complaint, the Complainants are required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly SimilarThe Complainants have demonstrated that they have registered trademark rights for the name and mark ACTAVIS. The disputed domain name
In the view of the Panel, the Complainants’ submissions referred to above give rise to a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. However, the Respondent has chosen not to file any formal Response in the proceeding which may have disputed the Complainants’ submissions or demonstrated any rights or legitimate interests in the disputed domain name on the Respondent’s part. Insofar as the Respondent’s email dated September 16, 2021 suggests that the disputed domain name was to be used for a blog, the Respondent has produced no evidence of any preparations to publish any such blog; nor has the Respondent explained why the disputed domain name, even if used in this way, would not mislead Internet users into believing it was operated by, or otherwise affiliated with, the Complainants.
In the circumstances, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad FaithThe Panel accepts the Complainants’ submission that its trademark ACTAVIS constitutes an invented and distinctive term and finds it inconceivable that the Respondent registered the disputed domain name without knowledge of the Complainants’ trademark and business. Indeed, the Respondent’s email dated September 16, 2021, which refers to “a blogger to promote activis brand” clearly concedes the Respondent’s knowledge of, and intention to refer to, the Complainants’ ACTAVIS trademark.
The Panel finds further that the disputed domain name is inherently misleading in nature. It combines the Complainants’ trademark ACTAVIS with the dictionary word “pharma” and the TLD “health”, both of which terms are closely associated with the Complainants’ business activities. The Panel finds in these circumstances that the disputed domain name will inevitably mislead a significant number of Internet users into believing that the disputed domain name must be operated by, or otherwise officially associated with, the Complainants.
The Panel rejects the Respondent’s (informal) submission that the disputed domain name was registered for the purpose of a blog, and observes that any such use would be tainted in any event by the inherently misleading nature of the disputed domain name. The Panel infers in all the circumstances that the Respondent registered the disputed domain name for the purpose of taking unfair advantage of the Complainants’ goodwill in their ACTAVIS trademark by creating a likelihood of confusion with that trademark for the purpose of future commercial gain. The fact that the Respondent has not yet used the disputed domain name for the purpose of any active website does not detract from the Panel’s overall view that the disputed domain name was registered and has been used in bad faith (see e.g. Telstra Corp, Inc. v. Nuclear Marshmallows,WIPO Case No. D2000-0003).
The Panel therefore finds that the disputed domain name has been registered and is being used in bad faith.
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
Steven A. Maier
Sole Panelist
Date: October 14, 2021
1 The Panel notes that the Complainants have additional trademark registrations for the word mark ACTAVIS PHARMA, to which the disputed domain name would be identical. However no express reliance is placed on those trademarks in the Complaint.