Mylan Inc. v T.A

WIPO Case No. D2024-3569

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

MYLAN INC. v. T.A.

Case No. D2024-3569

1. The Parties

The Complainant is MYLAN INC., United States of America (“United States” or “US”), represented by Viatris

Inc., United States.

The Respondent is T.A., United Kingdom.

2. The Domain Name and Registrar

The disputed domain name <mylanviatris.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 3,

2024. On September 4, 2024, the Center transmitted by email to the Registrar a request for registrar

verification in connection with the disputed domain name. On September 4, 2024, 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 (DOMAINS BY PROXY) and contact information in

the Complaint. The Center sent an email communication to the Complainant on September 6, 2024,

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 9,

2024.

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 paragraphs 2 and 4 of the Rules, the Center formally notified the Respondent of the

Complaint, and the proceedings commenced on September 17, 2024. In accordance with paragraph 5 of the

Rules, the due date for Response was October 7, 2024. The Respondent sent informal email

communications to the Center on September 9 and 17, 2024.

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The Center appointed Yuji Yamaguchi as the sole panelist in this matter on October 21, 2024. 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 paragraph 7 of the

Rules.

4. Factual Background

The Complainant is a member company of Viatris Inc. (“Viatris”), a global healthcare company. The

Complainant is a global generic and specialty pharmaceuticals company which has become distinguished in

various fields of medicine and pharmaceuticals and has acquired controlling interest in a number of top

producing active pharmaceutical companies for generic drugs, such as Matrix-Laboratories Limited and

Merck KGaA. Founded in 1961, the Complainant has developed and produced medicines for a wide range

of medical disciplines, including oncology, anaphylaxis, antiretrovirals, cardiovascular, respiratory,

dermatology, immunology, anesthesia, pain management, infectious disease, gastroenterology, diabetology,

endocrinology, and women’s healthcare.

The Complainant has registered the VIATRIS mark in the United States as well as many foreign countries,

totaling to approximately 705 registrations worldwide connected to its areas of business. In addition, the

Complainant continues to globally use the MYLAN mark and has obtained approximately 305 registrations

for MYLAN mark throughout the world. The Complainant is the owner of the entire right, title, and interest in

and to the VIATRIS marks (US Trademark Registration Nos. 6,149,437 (registered on September 8, 2020),

7,079,834 (registered on June 13, 2023) and 7,429,552 (registered on June 25, 2024), China Trademark

Registration No. 41165004 (registered on August 28, 2020), India Trademark Registration No. 4300724

(registered on September 23, 2019), Canada Trademark Registration No. TMA1,111,290 (registered on

October 13, 2021), and European Union (“EU”) Trade Mark Registration No. 018151202 (registered on

May 22, 2020)) and MYLAN marks (US Trademark Registration No. 3,343,114 (registered on November 27,

2007), China Trademark Registration Nos. 951258 (registered on January 7, 2008) and 21471446

(registered on November 21, 2017), India Trademark Registration Nos. 1540483 (registered on March 15,

2007) and 3397588 (registered on October 26, 2016), Canada Trademark Registration No. TMA846,856

(registered on March 21, 2013), and EU Trade Mark Registration No. 005450721 (registered on

September 11, 2009)). The VIATRIS mark has been used since at least as early as 2020, and the MYLAN

mark has been in use since at least as early as 1973.

The disputed domain name was registered on August 13, 2024, and resolved to a temporary page which

features a “Launching Soon” graphic with a subscribe section for site visitors to enter their email address for

site updates and a “Mylan Viatris” copyright statement, and currently resolves to a parking page provided by

the Registrar which presents a list of clickable categories related to “Pharmaceutical Company”.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for the

transfer of the disputed domain name.

Notably, the Complainant's contentions may be summarized as follows:

The disputed domain name clearly incorporates Complainant’s registered VIATRIS and MYLAN marks to

divert Internet users to an unauthorized website and create a false and misleading association with the

Complainant. The Respondent never obtained license or permission from the Complainant to use the

trademarks in the disputed domain name. The Respondent has no acquired trademark or service mark

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rights as a result of acquiring the disputed domain name and is not using the disputed domain name with a

bona fide offering of goods and services. Instead, the Respondent is masquerading as the Complainant with

intent for unlawful commercial gain.

The Respondent has actual or constructive knowledge of the actual Viatris company, along with the valuable

associated trademarks and service marks as evidenced by their intentional use of both MYLAN and VIATRIS

marks. This usage tarnishes the Complainant’s marks and associated goodwill, but also it purposely disrupts

the Complainant’s business and will lead to consumer confusion as to affiliation, all of which further provide

evidence of bad faith.

B. Respondent

The Respondent communicated with the Center by email stating that the Respondent has requested the

disputed domain name to be cancelled by the Registrar as the Respondent is unable to do it by itself, but did

not file a formal response to the Complainant’s contentions.

6. Discussion and Findings

In accordance with paragraph 4(a) of the Policy, the Complainant must assert and prove the following three

elements are present:

(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 Similar

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. See section 1.7 of the WIPO Overview of

WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”).

The disputed domain name consists of the Complainant’s MYLAN mark and VIATRIS mark in its entirety

plus generic Top-Level Domain (“gTLD”) “.com”, which is generally viewed as a standard registration

requirement and as such is disregarded under the first element confusing similarity test. See section 1.11.1

of the WIPO Overview 3.0. A combination of two trademarks can still be considered to be confusingly

similar. The public will likely therefore confuse the disputed domain name with the Complainant’s

trademarks. See LEGO Juris A/S v. Intrexium Ltd, Lars Andersson, WIPO Case No. D2012-0450; see also

Société des Produits Nestlé SA v. Stuart Cook, WIPO Case No. D2002-0118.

Accordingly, the Panel finds that the first element in paragraph 4(a) of the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate

rights or legitimate interests in a disputed domain name.

As the Complainant asserts, the Respondent has not acquired any trademark or service mark rights in

respect of the disputed domain name, and the Respondent never obtained license or permission from the

Complainant to use the MYLAN and VIATRIS marks in the disputed domain name. Moreover, there is no

evidence to show that the Respondent has been commonly known by the disputed domain name pursuant to

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paragraph 4(c)(ii) of the Policy, and the Respondent is not using the disputed domain name in connection

with a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy.

According to the Respondent, the Respondent has requested the disputed domain name to be cancelled by

the Registrar and thus, the Respondent does not contend that the Respondent has no rights or legitimate

interests in respect of the disputed domain name.

Although the overall burden of proof in the proceedings is on the complainant, where a complainant makes

out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on the

second element in paragraph 4(a) of the Policy shifts to the respondent to come forward with relevant

evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof

always remains on the complainant). If the respondent fails to come forward with such relevant evidence,

the complainant is deemed to have satisfied the second element in paragraph 4(a) of the Policy. See section

2.1 of the WIPO Overview 3.0.

Having reviewed the available record, the Panel finds the Complainant has established a prima facie case

that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has

not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence

demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the

Policy or otherwise.

Therefore, the Panel finds the second element in paragraph 4(a) of the Policy has been established.

C. Registered and Used in Bad Faith

As the Complainant’s MYLAN and VIATRIS marks are widely known worldwide, the Respondent is highly

likely to have had actual knowledge of the Complainant’s MYLAN and VIATRIS marks when the Respondent

registered the disputed domain name.

As illustrated in section 3.3 of the WIPO Overview 3.0, “coming soon” page would not prevent a finding of

bad faith under the doctrine of passive holding, and also, as stated in section 3.5 of the WIPO Overview 3.0,

a respondent cannot disclaim responsibility for content appearing on the website associated with its domain

name with respect to “automatically” generated pay-per-click links.

The fact that the disputed domain name resolved to a temporary page which features a “Launching Soon”

graphic with a subscribe section for site visitors to enter their email address for site updates (see Archer-

Daniels-Midland Company v. Elaine Watson, WIPO Case No. D2024-3219; L’Oréal v. Loic Tregan, WIPO

Case No. D2024-3153) and a “Mylan Viatris” copyright statement, and the fact that the disputed domain

name currently resolves to a parking page provided by the Registrar which presents a list of clickable

categories related to “Pharmaceutical Company” show that the Respondent has used and continues to use

the disputed domain name primarily for the purpose of intentionally attempting to mislead Internet users into

believing the disputed domain name is associated with the Complainant to trade on the Complainant’s

extensive goodwill for commercial gain. In addition, the false copyright notice on the website connected to

the disputed domain name, “Copyright © 2024 Mylan Viatris”, makes clear that the Respondent’s intention

was to impersonate the Complainant (see Philip Morris Products S.A. v. Domain Admin, Privacy Protect, LLC

(PrivacyProtect.org) / Kerem Elkoca, WIPO Case No. D2021-2717).

Having reviewed the available record, the Panel finds that in the circumstances of this case the Respondent

has registered and is using the disputed domain name in bad faith under the Policy.

Consequently, the Panel concludes that the third element in paragraph 4(a) of the Policy has been

established.

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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 <mylanviatris.com> be transferred to the Complainant.

/Yuji Yamaguchi/

Yuji Yamaguchi

Sole Panelist

Date: November 4, 2024