TEVA Pharmaceutical Industries Limited v Name Redacted
WIPO Case No. D2022-3791
•24-11-2022
ARBITRATION
AND
| MEDIATION CENTER |
ADMINISTRATIVE PANEL DECISION
TEVA Pharmaceutical Industries Limited v. Name Redacted
Case No. D2022-3791
1. The Parties
Complainant is TEVA Pharmaceutical Industries Limited, Israel, represented by SILKA AB, Sweden.
Respondent is Name Redacted.[1]
[1] Respondent appears to have used the name of Complainant when registering the disputed domain name. In light of the apparent
2. The Domain Name and Registrar
The disputed domain name <tevapharmamumbai.com> is registered with Google LLC (the “Registrar”).
3. Procedural History
| On October 11, 2022, the Center transmitted by email to the Registrar a request for registrar verification in | The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 11, 2022. on October 14, 2022. |
| 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”). |
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In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on October 18, 2022. In accordance with the Rules, paragraph 5, the due date for Response was November 7, 2022. Respondent did not submit any response. Accordingly, the
Center notified the Parties of Respondent’s default on November 8, 2022.
The Center appointed Ingrīda Kariņa-Bērziņa as the sole panelist in this matter on November 10, 2022. 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 is one of the world’s largest producers of generic medicines. It is the proprietor of numerous registrations for its TEVA trademark, including the following:
- Israeli Trademark Registration No. 41075 for TEVA (word mark), registered on July 5, 1977 for goods in
class 5;
- Indian Trademark No. 572847 for TEVA (word mark), registered on May 11, 1992 for goods in class 5;
- French Trademark No. 3256982 for TEVA PHARMA (word mark), registered on April 23, 2004 for goods in
class 5.
Complainant operates its primary business website at the domain name <tevapharm.com,> and has registered a significant number of domain names including <tevapharma.com>. For the Indian region, its official website is at the domain name <tevapharm.in>.
The disputed domain name was registered on September 4, 2022. It does not resolve to an active website. domain name.
5. Parties’ Contentions
A. Complainant
Complainant’s contentions may be summarized as follows:
Under the first element, Complainant states that its corporate origins date to 1901. Today, it operates in 60
countries worldwide and is among the top pharmaceutical companies in the world, and the world’s largest
generic medicines producer. It has operated in India for over 20 years through various legal entities, several
of them registered in the city of Mumbai. The TEVA mark has been continuously and extensively used since
1975. It is distinctive, widely recognized and is a well-known mark. The disputed domain name incorporates
Complainant’s mark in its entirety and is confusingly similar to Complainant’s domain names at
<tevapharm.com> and <tevapharma.com>.
Under the second element, Complainant states that it has built up significant goodwill and reputation in its TEVA mark. The disputed domain name gives the impression of association with Complainant which is not based in fact. Complainant has not authorized Respondent or any third party to register or make use of the disputed domain name. There is evidence that MX records are active for the disputed domain name, which is being or intended to be used for phishing or other fraudulent purposes through the use of email addresses ending with “@tevapharmamumbai.com”. Respondent is not known by the disputed domain name and there is no legitimate noncommercial or fair use being made thereof.
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Under the third element, Complainant states that its TEVA mark is a distinctive term in relation to pharmaceuticals and it has been put to use by Complainant exclusively internationally. Complainant has a significant presence in Mumbai, India. The disputed domain name comprises Complainant’s TEVA mark together with Mumbai, the name of a city where Complainant is active. This indicates Respondent’s actual knowledge of Complainant and its mark. The disputed domain name is being passively held in bad faith. The active MX records are evidence that deceptive email messages originating from addresses using “@tevapharmamumbai.com” will be sent. The registration of the disputed domain name under these circumstances represents opportunistic bad faith. Respondent has impersonated Complainant by falsely providing Complainant’s name in the registration details.
Complainant requests transfer of the disputed domain name.
B. Respondent
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the UDRP requires Complainant to make out all three of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which
Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) Respondent has registered and is using the disputed domain name in bad faith.
Under 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.”
A. Identical or Confusingly Similar
Complainant has provided evidence establishing that it has trademark rights in the TEVA and TEVA
PHARMA marks through registrations in Israel, India and France. Complainant thereby satisfies the
threshold requirement of having trademark rights for purposes of standing to file a UDRP case. See WIPO
Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section
1.2.1.
In comparing Complainant’s marks with the disputed domain name, the Panel finds that the disputed domain name is confusingly similar to Complainant’s marks. The disputed domain name reflects Complainant’s TEVA and TEVA PHARMA marks in their entirety, followed by the geographical term “mumbai.” It is the consensus view of UDRP panels that, where a domain name incorporates the entirety of a trademark, the domain name will normally be considered confusingly similar to that mark. Moreover, where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. See WIPO Overview 3.0, sections 1.7 and 1.8.
It is the well-established view of UDRP panels that the generic Top-Level Domain (“gTLD”) “.com” is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test (see 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 4(a) of the
Policy.
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B. Rights or Legitimate Interests
Pursuant to paragraph 4(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 Panel finds that the fact that Respondent from India used part of Complainant’s name for the registration of the disputed domain name does not mean that Respondent is commonly known by the disputed domain name nor is using the TEVA or TEVA PHARMA mark with the permission of Complainant. The nature of the disputed domain name, which reflects Complainant’s marks in their entirety together with a geographical term, cannot constitute fair use since it effectively impersonates or suggests sponsorship or endorsement by Complainant. See, for example, Iflscience Limited v. Domains By Proxy LLC / Dr Chauncey Siemens, WIPO Case No. D2016-0909; B&B Hotels v. WhoisGuard Protected, WhoisGuard, Inc. / Soro Wonna, WIPO Case No. D2020-2837. See also WIPO Overview 3.0, section 2.5.1.
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 cited 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, in failing to file a response, has not submitted any evidence or arguments demonstrating such rights or legitimate interests, nor has it rebutted any of Complainant’s contentions. The disputed domain name does not resolve to an active website. There is no evidence that the disputed domain name has been registered and is being used for legitimate noncommercial or fair use purposes. See WIPO Overview 3.0, section 2.1, and cases cited thereunder.
Accordingly, the Panel finds that Complainant has established the second element under paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
Pursuant to paragraph 4(b) of the Policy, the Panel finds that Complainant has demonstrated Respondent’s bad faith registration and use of the disputed domain name. Complainant’s rights in its TEVA mark predate the registration of the disputed domain name by more than 40 years; its rights in TEVA PHARMA predate the
| and TEVA PHARMA marks together with the word “mumbai.” The disputed domain name is therefore nearly | disputed domain name by more than 15 years. The disputed domain name reflects Complainant’s TEVA marks. |
| The Panel further finds that Complainant has, on balance, demonstrated Respondent’s bad faith by passive holding of the disputed domain name. Such a finding is consistent with previous UDRP decisions, such as Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. See also WIPO |
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Overview 3.0, section 3.3. In particular, the disputed domain name reflects Complainant’s registered TEVA and TEVA PHARMA marks. Respondent failed to provide any evidence of a connection to a legitimate business related to Complainant’s marks, and, in using Complainant’s name when registering the disputed domain name, has engaged in identity theft. Respondent has failed to provide any evidence of actual or contemplated good-faith use of the disputed domain name. Under the circumstances, the Panel does not find any such use plausible.
The Panel finds that Respondent’s registration of MX records in respect of the disputed domain are further
circumstances demonstrating bad faith registration and use of the disputed domain name. See, for example,
Fox Media LLC v. Domain Admin, Privacy Protect, LLC (PrivacyProtect.org) / AIDA GONZALEZPEREZ
GONZALEZPEREZ, WIPO Case No. D2022-0120; Equinor ASA v. Joe Bright Nyarko, Apt Support
Ventures, WIPO Case No. D2021-4131.
The Panel therefore finds that Complainant has established the third element under paragraph 4(a) of the
Policy.
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 <tevapharmamumbai.com> be transferred to Complainant.
/Ingrīda Kariņa-Bērziņa/
Ingrīda Kariņa-Bērziņa
Sole Panelist
Date: November 24, 2022
identity theft, the Panel has redacted Respondent’s name from this Decision. However, the Panel has attached as Annex 1 to this
Decision an instruction to the Registrar regarding transfer of the disputed domain name which includes the name of Respondent. The
Panel has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding, and has indicated Annex 1
to this Decision shall not be published due to the exceptional circumstances of this case. See ASOS plc. v. Name Redacted, WIPO
Case No. D2017-1520; Banco Bradesco S.A. v. FAST-12785241 Attn. Bradescourgente.net / Name Redacted, WIPO Case No.
D2009-1788.
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