Complainant is Actavis Group PTC ehf, Iceland, represented by SILKA AB, Sweden.
Respondent is Personal Email, United Arab Emirates. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 25, 2020. On September 25, 2020, the Center transmitted by email to AE Domain Administration (.aeDA) a request for registrar verification in connection with the disputed domain name. On September 27, 2020, .aeDA 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 Complainant on October 12, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on October 13, 2020. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the UAE Domain Name Dispute Resolution Policy for – UAE DRP approved by .aeDA (the “Policy”), the Rules for UAE Domain Name Dispute Resolution Policy - UAE DRP (the “Rules”), and the Supplemental Rules for UAE Domain Name Dispute Resolution Policy - UAE DRP (the “Supplemental Rules”). In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on October 16, 2020. In accordance with the Rules, paragraph 5(a), the due date for Response was November 5, 2020. The Response was filed on November 4, 2020. The Center appointed Ingrīda Kariņa-Bērziņa as panelists in this matter on November 26, 2020. 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 Complainant, established in Iceland, is a subsidiary of Teva Pharmaceutical Industries, Ltd, a producer of generic pharmaceuticals. Complainant is the proprietor of registrations for the TEVA mark, including United Arab Emirates Trademark No. 14392 for TEVA (word mark) registered on December 8, 1996 for goods in class 5. According to the materials in the case file, the disputed domain name was registered on August 27, 2020. The disputed domain name does not resolve to an active website. A party identified only as “Personal Email” filed a Response on November 5, 2020. The case file and the Response itself contain no further identification of Respondent. 5. Parties’ Contentions A. Complainant Complainant’s contentions may be summarized as follows: Under the first element, Complainant states that it is a global company focused on acquiring, developing, manufacturing, and marketing branded pharmaceuticals, generic and over-the-counter medicines, and biologic products. Complainant has a commercial presence in approximately 100 companies and owns trademark rights in the TEVA trademark registration in the United Arab Emirates. Teva is the global leader in generic pharmaceuticals. The disputed domain name consists of Complainant’s TEVA mark and the generic word “pharm”, which does not dispel confusing similarity when attached to a recognized trademark. The country-code top-level domain (“ccTLD”) “.ae” may be ignored for purposes of comparison between Complainant’s trademark and the disputed domain name. Under the second element, Complainant states that it has never granted any license to Respondent use the TEVA name or mark, and Respondent has not been commonly known by the name TEVA and owns no trademark registrations therefor. The use of the disputed domain name is not a legitimate fair use nor a noncommercial use, as it does not resolve to a real and effective website. The mark TEVA is so well-known in relation to the pharmaceutical industry that Respondent would have to show it has a pharmaceutical business that predated Complainant and/or its rights. There is nothing to indicate this is the case, therefore, the establishment of a website advertising pharmaceuticals under the pretense of a company called “Tevapharm” is for no other reason than to imitate Complainant. Under the third element, Complainant states that Respondent has apparently made no use of the disputed domain name. Under the Policy, it is not necessary to consider whether the disputed domain name is being used in bad faith, merely that it was registered in bad faith. Respondent’s inactivity, under the circumstances, amounts to the bad faith under the principles set forth in Telstra Corporation Limited v. Nuclear Marshmellows, WIPO Case No. 2000-0003. Respondent is not using the disputed domain name to resolve to a website that offers goods or services, however, there is a real likelihood that consumers Complainant would mistakenly find Respondent’s website, thereby interfering with Complainant’s business. Content could appear and deceive consumers into purchasing unauthorized medical products. The disputed domain name could mislead Internet users into thinking that it is associated with Complainant. Respondent’s lack of use of the disputed domain name could give Internet users seeking information on Complainant under the “.ae” ccTLD the impression that Complainant is not present on the Internet in the United Arab Emirates. The disputed domain name prevents Complainant from being present under the “.ae” ccTLD under a domain name incorporating its trademark. The disputed domain name has been registered and used in bad faith. Complainant requests transfer of the disputed domain name. B. Respondent Respondent’s Response may be summarized as follows: Under the first element, Respondent states that the assignment of the TEVA trademark to Complainant came from a shell company, speaking to the reputation of Complainant. “Teva” is a Hebrew word meaning “nature” and more commonly associated with an American shop selling outdoor gear. Respondent chose this name because it is a common and short word that is easy to remember. The term “pharm” is not in contention and will not be addressed by Respondent. The fact that “Teva” is a common, short and simple word is indicative of it being a weak mark. Under the second element, Respondent states that it has a legitimate interest in the disputed domain name because the word incorporates a common descriptive term, which is subject to substantial third-party use. The domain name system is not corollary to the trademark system, therefore, a domain name registrant need not have a corresponding trademark in order to have a legitimate right to a domain name. The Policy does not require registrants to carry out a search for conflicting trademark rights. At the time of effecting registration, Respondent had never heard of Complainant. Respondent’s interest in registering the domain name was purely for the simplicity and commonality of the name. Due to the simplistic nature of the mark and the fact that it is commonly associated with an American outdoor gear company, it should be considered a weak mark. Complainant has not shown evidence of “misleading diversion of consumers or the tarnishing of the trademark.” The Policy does not state non-use as a basis for establishing a lack of rights or legitimate interest. Complainant contradicts its own statements regarding the lack of use of the website. Under the third element, Respondent states that non-use is not listed under the Policy as a basis for bad faith. The Policy makes it clear that bad faith requires action directed against the specific Complainant, which is not the case. Complainant has owned the trademark for 20 years and has made no use of the disputed domain name, clearly indicating bad faith. There is no evidence that Respondent intends to sell the disputed domain name to Complainant or a competitor, and there is no evidence that Respondent obtained the disputed domain name to prevent Complainant from reflecting its mark. Respondent and Complainant are not competitors in business. 6. Discussion and Findings According to paragraph 15(a) of the Rules: “A panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Paragraph 6(a) of the Policy directs that Complainant must prove each of the following: (i) that the disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) that Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) that the disputed domain name has been registered or is being used in bad faith A. Preliminary Issue: Application of the Policy The Panel notes that the Policy is largely similar to the Uniform Domain Name Dispute Resolution Policy (the “UDRP”). Therefore, the Panel will, where relevant, apply principles that have been established in relation to the UDRP and elaborated in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), in determining this dispute. B. Preliminary Issue: Identification of the Respondent Pursuant to paragraph 5(b)(ii) of the Rules, Respondent shall, when filing a Response, “provide the name, postal and e-mail addresses, and the telephone and telefax numbers of the Respondent (Registrant) and of any representative authorized to act for the Respondent in the administrative proceeding.” The Panel notes that Respondent has failed to identify him or herself in the Response. The Panel has, however, reviewed the Response and considered it in the discussion below. C. Identical or Confusingly Similar Complainant has provided evidence establishing that it has trademark rights in the TEVA mark through registration in the United Arab Emirates, thereby satisfying the threshold requirement of having trademark rights for purposes of standing to file a case under paragraph 6(a)(i) of the Policy. In comparing Complainant’s TEVA mark with the disputed domain name, Respondent states that “teva” has a meaning in Hebrew and that it is also the name of an American company. Further, Respondent argues that “TEVA is a common, short and simple word […] indicative of it being a weak mark.” These arguments have no relevance in respect of the first element. Complainant holds a registered trademark for the TEVA mark, and Respondent has not rebutted Complainant’s assertions of said rights. Therefore, the Panel finds no reason to doubt that Complainant is, in fact, the holder of the rights it claims. See WIPO Overview 3.0, Section 1.2. Section 1.7 of WIPO Overview 3.0 provides: “It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name.” It is well-established that the ccTLD “.ae” is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test (see e.g., Accenture Global Services Limited v. Jack Martinez,WIPO Case No. DAE2018-0001; Automobile Club di Brescia v. Ye Li, 1600757, WIPO Case No. DAE2020-0003 and WIPO Overview 3.0, section 1.11.1, and cases cited thereunder). Accordingly, the Panel finds that Complainant has established the first element under paragraph 6(a) of the Policy. D. Rights or Legitimate Interests Pursuant to paragraph 6(c) of the Policy, a respondent may establish rights to or legitimate interests in a domain name by demonstrating any of the following: (i) before any notice to it of the dispute, Respondent’s 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) Respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or (iii) 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 or service mark at issue. The circumstances stated in the Complaint and evidence in support set forth in the case file indicate that, at the time that Respondent registered the disputed domain name, Respondent had no rights or legitimate interests in the disputed domain name. The nature of the disputed domain name, which contains Complainant’s long-established mark together with the term “pharm” cannot constitute fair use because Respondent thereby effectively impersonates or suggests sponsorship or endorsement by Complainant, the trademark owner and, not incidentally, a pharmaceutical company. See WIPO Overview 3.0, section 2.5.1. The Panel finds that there is no evidence that Respondent is commonly known by the disputed domain name or is using the TEVA mark with the permission of Complainant. The Panel therefore finds that the evidence submitted by Complainant establishes a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. Pursuant to WIPO Overview 3.0., section 2.1, and cases thereunder, where Complainant makes out a prima facie case that Respondent lacks rights or legitimate interests, the burden of production on this element shifts to Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. Respondent has not submitted any evidence or arguments demonstrating such rights or legitimate interests. The Panel is not persuaded by Respondent’s assertions that it chose the disputed domain name purely because it was short, and that Respondent had “never heard of the Complainant” at the time of registration. If that is the case, Respondent offers no explanation as to why he or she has decided to incorporate the term “pharm” within the disputed domain name. The use of “pharm” clearly indicates an association with a pharmaceutical company, a fact that Respondent does not address. Further, Respondent incorrectly states that Complainant was required to show “evidence of misleading diversion of consumers or the tarnishing of the trademark” to prove the second element. There is no such requirement in the Policy or the Rules, rather, it is the duty of Respondent to establish that it is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue (See Policy, paragraph 6(c)(iii)). The Panel agrees with Respondent that Complainant made contradictory statements regarding the existence of a website. However, Respondent does not provide the Panel with any evidence or credible arguments that would demonstrate its rights to and legitimate interests in the disputed domain name, as required under the three points set out in paragraph 6(c) of the Policy. Accordingly, the Panel finds on balance that Complainant has established the second element under paragraph 6(a) of the Policy. E. Registered or is Being Used in Bad Faith Paragraph 6(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration or use of the disputed domain name in bad faith: (i) circumstances indicating that Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or (ii) that Respondent has registered the disputed 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 Respondent has engaged in a pattern of such conduct; or (iii) that Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or (iv) that by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location. The Panel finds that the disputed domain name was registered in bad faith. Complainant’s rights in the TEVA mark predate by several decades the registration of the disputed domain name. It is not credible that Respondent was unaware of Complainant’s mark when it registered the disputed domain name, considering the fact that the disputed domain name includes the term “pharm,” thereby very clearly indicating an association with pharmaceuticals, an industry in which Complainant is active. The Panel finds that Respondent has not provided any evidence whatsoever of any actual or contemplated good faith use of the disputed domain name. Furthermore, Respondent’s failure to identify him or herself either at the time of registration or at the time of filing the Response are deliberate steps indicative of bad faith. Respondent’s use of false contact details prevented the delivery of the Complaint. Respondent, by concealing his or her identify despite multiple opportunities to reveal it, has thereby rendered it impossible in these proceedings to evaluate his or her conduct in a favorable light. The assertions set forth in the Response do not rebut Complainant’s contentions in respect of bad faith. The Panel therefore finds that, under the circumstances outlined above, the passive holding of the disputed domain name amounts to the Respondent acting in bad faith, a well-established doctrine under the UDRP and under the Policy. See, for example, Telstra v. Nuclear Marshmellows,WIPO Case No. D2000-0003; Alstom v. Alstom Middle East Case, WIPO Case No. DAE2019-0006 and AGFA-Gevaert N.V. v. Salim Almuhairi,WIPO Case No. DAE2017-0006. The Panel therefore finds that Complainant has established the third element under paragraph 6(a) of the Policy. 7. Decision For the foregoing reasons, in accordance with paragraphs 6(i) of the Policy and 15 of the Rules, the Panel orders that the domain name Ingrīda Kariņa-Bērziņa
Panelist
Date: December 10, 2020
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