Teva Pharmaceutical Industries Ltd v Jose Miranda
WIPO Case No. D2023-0420
•09-04-2023
ARBITRATION
AND
| MEDIATION CENTER |
ADMINISTRATIVE PANEL DECISION
Teva Pharmaceutical Industries Ltd v. Jose Miranda
Case No. D2023-0420
1. The Parties
The Complainant is Teva Pharmaceutical Industries Ltd, Israel, represented by SILKA AB, Sweden.
The Respondent is Jose Miranda, United States of America.
2. The Domain Name and Registrar
The disputed domain name <teva-usa.org> is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 30, 2023.
On January 31, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 31, 2023, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is not listed as the registrant and disclosing registrant and contact information for the disputed domain name which differed from the named Respondent (Redacted for Privacy, Privacy service provided by Withheld for Privacy ehf) and contact information in the Complaint. The Center sent an email communication to the Complainant on February 6, 2023 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 February 6, 2023.
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”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally sent notification to the Respondent of the Complaint, and the proceedings commenced on February 17, 2023. In accordance with the Rules, paragraph 5, the due date for Response was March 9, 2023. The Respondent did not submit any response.
Accordingly, the Center sent notification of the Respondent’s default on March 21, 2023.
The Center appointed Petra Pecar as the sole panelist in this matter on March 29, 2023. 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.
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4. Factual Background
The Complainant was established in 1935, with roots dating back to 1901. The Complainant is a leading global pharmaceutical company providing high-quality, patient-centric healthcare solutions. As one of the
world’s largest generic medicines producer in 2018, the Complainant offers a diverse portfolio of over 1,800
molecules, serving various therapeutic areas. The company holds a world-leading position in innovative treatments for central nervous system disorders and has a strong respiratory products portfolio. In 2017, they produced approximately 120 billion tablets and capsules at numerous manufacturing facilities
worldwide. According to their 2021 annual report, they are active in over 60 countries with sales exceeding
USD 15 billion and employing more than 37,000 people internationally.
The Complainant is the owner of portfolio of TEVA trademarks registered across many countries and territories, including:
| - | European Union Trademark Registration No. 000115394 TEVA (figurative mark), registered on April 29, 1998, in international class 5; | ||
| - | European Union Trademark Registration No. 1192830 TEVA (word mark), registered on July 18, 2000, in international classes 3, 5, and 10; | ||
| - |
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| 11, 2020, in international class 36, with the first use in commerce on February 26, 2018; | |||
| - |
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| 18, 2020, in international class 44, with the first use in commerce on February 26, 2018; | |||
| - |
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| 2016, in international classes 5, 10, and 42; and | |||
| - |
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| 28, 2016, in international classes 1, 3, 5, 9, 10, 16, 35, 42, and 44. |
The Complainant has an online presence through the domain name <tevausa.com>, which was registered on June 14, 1996 in the name of its subsidiary Teva Pharmaceuticals USA, Inc. The website hosted on this domain name provides information about the company and its activities.
The disputed domain name was registered on December 27, 2022, and it does not resolve to an active website.
5. Parties’ Contentions
A. Complainant
The Complainant states that its well-known TEVA mark is entirely incorporated and recognizable in the disputed domain name, resulting in confusing similarity as per paragraph 4(a)(i) of the Policy. The
Complainant argues that the additional elements, such as a hyphen and the term “usa” which is an
abbreviation for United States of America do not alleviate confusing similarity, as established by WIPO
Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section
1.8, and supported by various UDRP decisions. The Complainant also asserts that the inclusion of the
generic Top-Level Domain (“gTLD”) “.org” is irrelevant to the assessment, as it is a standard registration
requirement and does not impact the confusing similarity evaluation. Based on these contentions, the
Complainant maintains that the disputed domain name is identical or confusingly similar to their well-known
TEVA mark, fulfilling the first requirement of the UDRP.
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The Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain name according to the UDRP Policy and Rules. As supported by WIPO Overview 3.0, the Complainant establishes a prima facie case by presenting various reasons, including: (1) the lack of consent or authorization from the Complainant to use the TEVA mark, (2) the absence of evidence suggesting the
Respondent is commonly known by “teva-usa.org” or “teva-usa”, (3) no trademark rights held by the
Respondent for the disputed domain name or “teva-usa”, (4) no discernible meaning in the English language for “teva-usa”, (5) the Respondent’s failure to use the disputed domain name in good faith or for a
non-commercial activity, and (6) the likelihood that the disputed domain name seeks to capitalize on the
reputation and goodwill of the Complainant’s TEVA marks, misleading consumers and implying false
affiliation. Given these circumstances, the Complainant argues that the Respondent lacks rights or
legitimate interests in the disputed domain name, fulfilling the second element of the UDRP.
The Complainant argues that the Respondent registered and is using the disputed domain name in bad faith.
The TEVA mark, owned by the Complainant, was registered and in use well before the disputed domain
name registration. Given the mark’s international recognition and the disputed domain name similarity to the
Complainant’s domain name <tevausa.com>, it is implausible that the Respondent was unaware of the
Complainant’s mark.
The Complainant cites WIPO UDRP decisions supporting the claim that registration of a domain name
identical or confusingly similar to a well-known trademark is a presumption of bad faith. The Respondent’s
passive holding of the disputed domain name also constitutes bad faith use according to the doctrine of
passive holding, as the TEVA mark is well-known, the Respondent is concealing its identity, and it is
implausible to imagine any good faith use for the disputed domain name.
Finally, the Complainant highlights that the disputed domain name is offered for sale for USD 199, indicating that it was registered for the purpose of reselling at a profit, which is also considered bad faith use. In
conclusion, the Complainant believes that the Respondent’s actions prove the disputed domain name was
registered and is being used in bad faith, satisfying the third element of the Policy.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Even if the Respondent did not file a Response to the Complainant’s contentions, the Panel shall consider
the issues present in the case based on the statements and documents submitted by the Complainant.
“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”, as
indicated in paragraph 15(a) of the Rules.
Under paragraph 4(a) of the Policy, the Complainant is required to prove each of the following three elements:
(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the
Complainant has rights;
(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 by the Respondent in bad faith.
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires a complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights. A trademark
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registration provides a clear indication that the rights in the trademark belong to the complainant (see WIPO
Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section
1.2.1).
In the present case, the Panel finds that the Complainant has established its rights in the TEVA trademarks based on previous European Union and worldwide trademark registrations, which preceded the disputed domain name registration for at least 24 years.
Previous UDRP panels have found the Complainant’s TEVA trademark to be wellknown (see Teva
Pharmaceutical Industries Ltd. v. Domain Administrator, See PrivacyGuardian.org / Torsten Burger, WIPO
Case No. D2021-0924; Teva Pharmaceutical Industries Limited v. 石磊 (Shi Lei), WIPO Case
No. D2021-1522; Teva Pharmaceutical Industries Limited v. Ahmed Rahul, Dry, WIPO Case
No. D2019-2488). In addition to that, the Complainant has provided evidence in respect to the recognition of
reputation of the TEVA trademark throughout the world, and this Panel, therefore, holds that indeed the
TEVA trademark should be observed as a well-known trademark.
The disputed domain name <teva-usa.org> consists of the Complainant’s trademark TEVA with the addition of a hyphen, the geographic abbreviation “usa”, presumably in reference to the United States of America and
the applicable gTLD suffix “.org”. Because the Complainant’s TEVA trademark is recognizable within the
disputed domain name, the inclusion of the additional elements does not prevent a finding of confusing
similarity.
As noted in WIPO Overview 3.0, section 1.8: “Where the relevant trademark is recognizable within the
disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative,
meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.”
Similarly, the gTLD “.org” does not generally preclude a finding of confusing similarity between the disputed
domain name and the Complainant’s trademarks in accordance with the well-established practice of previous
UDRP panels. Therefore, the Panel holds that the combination of the Complainant’s trademark TEVA
together with a hyphen, geographic abbreviation “usa” and the applicable gTLD suffix “.org” does not prevent
a finding of confusing similarity between the disputed domain name and the Complainant’s TEVA trademark,
which remains clearly recognizable in the disputed domain name.
Accordingly, the Panel finds that the disputed domain name is confusingly similar to the trademark in which
the Complainant has rights, meaning that the Complainant has satisfied the requirement under
paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Under the second element of the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with relevant evidence to rebut that presumption. If the respondent fails to do so, a complainant is generally deemed to have satisfied the second element, as set out in paragraph 4(a)(ii) of the Policy (see also WIPO Overview 3.0, section 2.1).
The Respondent failed to provide any evidence of authorization to use the TEVA trademarks or to register a domain name containing TEVA trademark.
According to the Complainant, the Respondent is not associated or connected with the Complainant in any way, and the Complainant has not granted the Respondent any license or authorization to utilize or register
any domain name that includes the Complainant’s TEVA trademark. The Respondent has further failed to
provide a response to the Complaint, thereby failing to present any information or factors that could
potentially justify prior rights or legitimate interests in the disputed domain name. Additionally, there appears
to be no evidence of the Respondent engaging in any legitimate or genuine use of the disputed domain
name, whether for noncommercial or bona fide activities.
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The Panel finds that the nature of the disputed domain name, which consists of the Complainant’s TEVA trademark, of the hyphen, additional term “usa”, suggests an affiliation with the Complainant and for that
reason a fair use cannot be constituted (see section 2.5.1 of the WIPO Overview 3.0).
Based on the above, the Panel finds that the second element of paragraph 4(a)(ii) of the Policy has been met by the Complainant.
C. Registered and Used in Bad Faith
The third element of paragraph 4(a) of the Policy requires a complainant to demonstrate that the respondent registered and is using the disputed domain name in bad faith. WIPO Overview 3.0, section 3.1, states that
“bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or
otherwise abuses a complainant’s mark”.
Paragraph 4(b) of the Policy stipulates that any of the following circumstances, inter alia, shall be considered as evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the
purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is
the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration
in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent registered the 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 the
respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of
disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract,
for commercial gain, Internet users to its website or other online location, by creating a likelihood of
confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the
respondent’s website or location or of a product or service on its website or location.
The fact that the disputed domain name comprises a combination of the Complainant’s TEVA trademark, hyphen and the additional part “usa” which is closely associated with the Complainant’s business. The
Complainant has also an online presence through the domain name <tevausa.com>. The website hosted on this domain name <tevausa.com> provides information about the company and its activities. The
registration of the domain name which comprise the Complainant trademark, geographical indication “usa”
and differ only in hyphen which divide the Complainant trademark and geographical indication and differ in
gTLD “.org”, reflects that the Respondent was familiar with the Complainant and TEVA trademark. With
regard to the bad faith at the time of registration, the Panel finds that it is likely that the Respondent was
aware of the Complainant’s rights and reputation in the TEVA trademark at the time the disputed domain
name was registered. Therefore, the Panel holds that the disputed domain name was registered in bad faith.
The disputed domain name does not resolve to an active website and there is no evidence that the disputed domain name has ever resolved to an active website in the past. The non-use of a domain name does not prevent a finding of bad faith under the doctrine of passive holding if certain circumstances are met (See section 3.3 of the WIPO Overview 3.0).
Furthermore, the disputed domain name was also offered for sale for USD 199 at Domain Agents, domain
name negotiation platform and marketplace, for an amount that exceeds the out-of-pocket costs associated
with registration and maintenance of a domain name. This is further evidence of bad faith as per
paragraph 4(b)(i) of the Policy.
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Furthermore, the Complainant’s TEVA trademark should be observed as a trademark that is sufficiently
distinctive and that enjoys certain level of reputation. The Respondent has failed to provide any response to the Complaint and has therefore failed to provide any justification for the registration and use of the disputed domain name. Based on the foregoing reasons, the Panel finds that the disputed domain name in the
present case should be observed as use in bad faith.
The Panel concludes that the disputed domain name was registered and used in bad faith and that consequently, the Complainant has satisfied the requirement under paragraph 4(a)(iii) 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 <teva-usa.org> be transferred to the Complainant.
/Petra Pecar/
Petra Pecar
Sole Panelist
Date: April 9, 2023
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