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 Michael Nava, Domain Nerdz LLC, 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 2, 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 7, 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 amendment to the Complaint on June 8, 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 (“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 14, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 4, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 5, 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. 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) and Complainant Actavis Group PTC ehf, Iceland owns an International Registration (No. 827298), registered on March 15, 2004. Respondent registered the disputed domain name on November 19, 2020. The disputed domain name directs to a page that offers it for sale for USD 1,988.00 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 both solid dosage and sterile dosage products. Complainants are joint owners of the ACTAVIS mark and therefore wish to proceed with a consolidated complaint. Complainant Actavis Holdco US, INC. owns two United States trademark registrations for ACTAVIS (as a word mark and in a stylized form) for generic pharmaceuticals, each registered more than five years ago. The Complaint references, but does not provide a copy of, an International Registration (covering Colombia owned by Complainant Actavis Group PTC ehf for generic pharmaceuticals and other goods and services, registered in 2004 (in the originating country and in Colombia). The disputed domain name (excluding the Top-Level Domain) is comprised solely of the ACTAVIS mark and is therefore identical or confusingly similar to the mark. Rights or Legitimate Interests Because the disputed domain name incorporates a mark that is not owned by Respondent and Respondent is not known by the name “Actavis”, there can be no bona fide offering of goods or services. ACTAVIS is a distinctive term and could not be legitimately used absent specific rights to the term. The term is not descriptive and does not identify any specific characteristics of any goods or services. There is nothing to suggest that Respondent has ever been commonly known by the disputed domain name or that Respondent has made a bona fide offering of goods or services or a legitimate noncommercial use. Respondent registered the disputed domain name incorporating a third party’s well-known mark, without any authorization and keeps it connected to a website where it is offered for sale. This does not establish a legitimate interest in the disputed domain name. Registered and Used in Bad Faith Respondent knowingly registered a name consisting of Complainants’ mark in order to divert Internet uses to Respondent’s website for Respondent’s commercial gain. Respondent most likely used fictitious and false data when registering the disputed domain name, supporting a finding of bad faith. Respondent is offering the disputed domain name for sale for USD 1,988.00 - far in excess of Respondent’s out-of-pocket expenses. In addition, Respondent is using a privacy protection service to conceal its identity which also suggests bad faith. Complainants sent a letter to Respondent on May 20, 2021, requesting transfer of the disputed domain name. Respondent did not respond. In light of Complainants’ rights in the ACTAVIS mark, it is highly unlikely that Respondent was not aware of Complainants’ rights. 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. The Complaint included evidence of the registration owned by Actavis Holdco US, INC. and referenced an International Registration owned by Actavis Group PTC ehf. The Panel shares the consensus view on the question of multiple complainants. A related company, such as a subsidiary or parent to the owner of a mark, may be considered to have rights in the 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 registrations1. The disputed domain name is identical to the ACTAVIS mark but for the generic Top-Level Domain. The Panel finds that the domain name is identical or 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 (on complainant’s prima facie case, burden of production shifts to respondent). Although the Complaint’s arguments are somewhat conclusory, the Panel agrees that: - There is no reason to believe that Respondent is commonly known by the disputed domain name. - It does not appear that Respondent is making use of the disputed domain name in connection with any bona fide offering. Given that the term “actavis” is not a descriptive or generic term, the disputed domain name appears to be referring to one or both Complainants. - It does not appear that Respondent’s use is either noncommercial or otherwise a fair use. 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 domain name. C. Registered and Used in Bad Faith Merely registering a domain name in the hopes of selling it for a profit does not, in and of itself, establish bad faith registration and use. Here, however, the disputed domain name is identical to a mark whose registration predates registration of the disputed domain name by more than 15 years. Given the distinctive nature of the term “actavis,” it therefore seems most probable that Respondent was aware of Complainants and the mark and registered the disputed domain name with them in mind. The Panel finds that the offer for sale of the disputed domain name is evidence of bad faith. 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 has 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 Complainants did not provide a copy of the certificate of registration for the International Registration. See Rules, paragraph 3(b)(xiv). However, the Panel was able to confirm the registration from publicly-available information on WIPO’s Madrid Monitor website. See WIPO Overview 3.0, section 4.8 (“a panel may undertake limited factual research into matters of public record … [such as] accessing trademark registration databases.”). 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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