The Complainant is Actavis Group PTC ehf, Iceland, represented by SILKA AB, Sweden.
The Respondent is Sabin Stanescu, Romania. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 15, 2021. On July 15, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 16, 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 July 19, 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 July 21, 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”). On July 19, 2021, the Center sent an email, in both Romanian and English, in relation to the Language of Proceedings, to which the Respondent did not respond and the Complainant requested English to be the language of the proceedings. In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint in both Romanian and English, and the proceedings commenced on July 27, 2021. In accordance with the Rules, paragraph 5, the due date for Response was Augsut 16, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 17, 2021. The Center appointed Marilena Comanescu as the sole panelist in this matter on August 24, 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. Language of the Proceeding The Complainant has requested that the language of proceeding be English and the Respondent did not respond to the Center’s email related to the language of the proceeding, nor provided any Response in any language whatsoever. The Respondent sent only an informal reply to one of the Center’s communications, as detailed in section 6.B below. In the present case, the disputed domain name consists of the invented and trademarked word “actavis”, the Complainant and its representative do not understand Romanian and they are not located in Romania. The Respondent, having been notified of the present proceeding in both English and Romanian, has failed to file a Response, or to comment on the language of the proceeding. The Panel considers that the Complainant will only be disadvantaged if required to translate the Complaint into Romanian and the proceeding will be unduly delayed. See section 4.5.1. of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). For all the above, the Panel decides that English is the language of the proceeding. 5. Factual Background The Complainant, Actavis Group PTC ehf, develops, manufactures, and markets a broad line of generic pharmaceuticals, including both solid dosage and sterile dosage products. On August 2, 2016, Teva Pharmaceutical Industries Ltd and Allergan plc announced that Teva had completed its acquisition of Allergan’s generics business (“Actavis Generics”). The Complainant is now an indirect wholly-owned subsidiary of Teva Pharmaceutical Industries Ltd, a leading global pharmaceutical company headquartered in Israel, and one of the world’s largest generic medicines producer. The Complainant (directly or through its group of companies) is the owner of several registered trademarks for ACTAVIS including in the European Union where the Respondent is located. See, for example, the European Union Trademark Registration No. 003615721 registered on January 16, 2006 for ACTAVIS (word), covering goods and services in classes 1, 3, 5, 10, 42 and 44. The Complainant (directly or through its group of companies) is the owner of numerous domain names containing the trademark ACTAVIS, such as The disputed domain name The Complainant contends that the disputed domain name is confusingly similar to its well-known trademark, the Respondent has no rights or legitimate interests in the disputed domain name, and the Respondent registered and is using the disputed domain name in bad faith. The Complainant requests the transfer of the disputed domain name to it. B. Respondent The Respondent did not formally reply to the Complainant’s contentions. The Respondent only sent an email on July 22, 2021 saying in Romanian “thank you a lot” to the Center for acknowledging receipt of the Complainant’s communication containing the Amended Complaint. 7. Discussion and Findings In view of the absence of a formal Response, the discussion and findings will be based upon the contentions in the Complaint and any reasonable position that can be attributable to the Respondent. Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the following circumstances are met: (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 the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith. The Panel will further analyze the potential concurrence of the above circumstances. A. Identical or Confusingly Similar The Panel finds that the Complainant holds rights in the ACTAVIS trademark. The disputed domain name Further, it is well established that the country-code Top-Level Domain (“ccTLD”) (e.g.,“.ro”) may typically be disregarded for the purposes of consideration of confusing similarity between a trademark and a domain name. See section 1.11 of the WIPO Overview 3.0. Given the above, the Panel finds that the disputed domain name is identical to the trademark ACTAVIS, pursuant to the Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests The Complainant asserts that the Respondent does not hold any trademark rights, license, or authorization whatsoever to use the mark ACTAVIS, that the Respondent is not commonly known by the disputed domain name and that the Respondent has not used the disputed domain name in connection with a legitimate noncommercial or fair use or a bona fide offering of goods or services. Under the Policy, “where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element”. See section 2.1 of theWIPO Overview 3.0. The Respondent has not replied to the Complainant’s contentions and has not come forward with relevant evidence to rebut the Complainant’s prima facie case. There is nothing in the record suggesting that the Respondent has ever been commonly known by the disputed domain name or that the Respondent made a bona fide offering of goods or services or a legitimate noncommercial use under the disputed domain name. In fact, at the time of filing the Complaint, the website under the disputed domain name was offered for public sale. Althought the practice such of registering a domain name for subsequent resale can be a legitimate activity, factors such the nature of the domain name and the distinctiveness of the trademark at issue are one of the relevant factors in assesing the good faith registration and use of the respective domain name. In this case, the disputed domain name reproduces exactly the Complainant’s distinctive and well-know trademark and therefore such use of the disputed domain name cannot qualify as an activity falling under the circumstances listed by paragraph 4(c) of the UDRP as demonstrating the Respondent’s rights or legitimate interests in the disputed domain name, nor an activity from which rights or legitimate interests could arise. Furthermore, and without prejudice to the above, the nature of the disputed domain name, comprising the Complainant’s trademark in its entirety, carries a high risk of implied affiliation. See section 2.5.1 of the WIPO Overview 3.0. For these reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, pursuant to the Policy, paragraph 4(a)(ii). C. Registered and Used in Bad Faith The Complainant holds trademark rights for ACTAVIS since 2004. This Panel accepts the Complainant’s evidence that ACTAVIS trademark is well-knwon worldwide in its business. See also Actavis Holdco US, Inc v. Mahfuz Akand, Software Bazar Bangladesh,WIPO Case No. D2021-0834. The disputed domain name was created in 2019 and incorporates the Complainant’s mark in its entirety. From the above and the available record, the Panel finds that the disputed domain name was registered by the Respondent in bad faith, with knowledge of the Complainant and targeting its trademark. Paragraph 4(b)(i) of the Policy provides a circumstance of bad faith registration and use when the respondent has acquired the domain name primarily for the purpose of selling or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or to a competitor of that complainant, for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name. In the present matter, according to the evidence provided in the Complaint, the disputed domain name was offered for sale for USD 1,800. The Panel finds that this amount exceeds the out‑of‑pocket costs directly related to the disputed domain name. The Respondent did not put forward any arguments in its favor in this proceeding, he simply acknowledged the receipt of the Complaint. Further, it was consistently found by UDRP panels that the mere registration of a domain name that is identical or confusingly similar to a third party’s well-known trademark constitutes, by itself, a presumption of bad faith registration for the purpose of Policy. See section 3.1.4 of the WIPO Overview 3.0. For all the above reasons, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith, pursuant to the Policy, paragraph 4(a)(iii). 8. 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 Marilena Comanescu
Sole Panelist
Date: September 1, 2021
Full & Egal Universal Law Academy