Teva Pharmaceutical Industries Ltd. v. Withheld for Privacy Purposes / Privacy service provided by Withheld for Privacy ehf
Claim Number: FA2111001973413
Complainant is Teva Pharmaceutical Industries Ltd. ("Complainant"), represented by Cecilia Borgenstam of SILKA AB, Sweden. Respondent is Withheld for Privacy Purposes / Privacy service provided by Withheld for Privacy ehf ("Respondent"), Iceland.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tevapharm.us.com>, registered with NameCheap, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
David E. Sorkin as Panelist.
Complainant participated in the mandatory CentralNic Mediation, and the mediation process was terminated on October 21, 2021.
Complainant submitted a Complaint to the Forum electronically on November 16, 2021; the Forum received payment on November 16, 2021.
On November 16, 2021, the Forum transmitted to CentralNic Ltd, the registry for the <.us.com> domain, a notification that a complaint under the CentralNic Dispute Resolution Policy (the "Policy" or "CDRP") had been received concerning the <tevapharm.us.com> domain name. The notification requested confirmation of Respondent's contact information and the expiration date of the registration, and confirmation that the domain name was locked at the registrar level, preventing it from being transferred, and would not be permitted to expire or be deleted pending this proceeding. CentralNic Ltd responded to the Forum on November 16, 2021, supplying Respondent's contact information and the expiration date of September 3, 2022, and confirming that the domain name was locked.
On November 16, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 6, 2021 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@tevapharm.us.com. Also on November 16, 2021, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On December 13, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin as Panelist.
On December 13, 2021, based upon an inquiry from the Panel, the Forum notified CentralNic Ltd that the <tevapharm.us.com> domain name appeared to have been made available for registration despite the lock, and asked whether a remedy of transfer would be possible if ordered by the Panel. A response was received from CentralNic Ltd on December 13, 2021, stating that the domain name had been deleted following a prior suspension, and that CentralNic Ltd would investigate the issue.
On December 14, 2021, the Forum asked CentralNic Ltd whether it would be able to re-lock the domain name in order to accommodate a transfer of the domain name should it be ordered by the Panel. CentralNic replied on December 14, 2021, stating that it would not be able to do so.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for CentralNic Dispute Resolution Policy ("Rules"). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, Rules, the Forum's Supplemental Rules, and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant alleges, with supporting evidence, that the disputed domain name <tevapharm.us.com> was registered via a privacy registration service in September 2021; that it incorporates Complainant's longstanding registered trademark TEVA and is almost identical to Complainant's <tevapharm.com> domain name; that it has been used to impersonate Complainant for fraudulent purposes; and that the registrant of the domain name offered to transfer the domain name to Complainant in exchange for a "settlement" payable in Bitcoin. Complainant contends that the <tevapharm.us.com> domain name is confusingly similar to its TEVA mark, that Respondent lacks rights or legitimate interests in the domain name; and that the domain name was registered and is being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered or is being used in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered or is being used in bad faith.
The Policy also requires that Complainant have participated in a CentralNic mediation, and that the mediation must have been terminated prior to the consideration of the Complaint.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy ("UDRP") and the CentralNic Dispute Resolution Policy, the Panel will draw upon UDRP principles as applicable in rendering its decision.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a), and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, § 4.3 (3d ed. 2017), available at http://www.wipo.int/amc/en/domains/search/overview3.0/; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (dismissing complaint where complainant failed to "produce clear evidence to support its subjective allegations").
The disputed domain name <tevapharm.us.com> incorporates Complainant's registered TEVA trademark, adding the generic term "pharm" (which describes Complainant's business) and the ".com" top-level domain. These alterations do not substantially diminish the similarity between the domain name and
Complainant's mark. See, e.g., Teva Pharmaceutical Industries Ltd. v. Whois Privacy Service / Luke Roy, D2020-2664 (WIPO Dec. 14, 2020) (finding <tevapharmus.com> confusingly similar to TEVA); Teva Pharmaceutical Industries Ltd. v. Whois Privacy, Private by Design, LLC / Christopher j Fowler, D2020-2103 (WIPO Oct. 15, 2020) (finding <tevaphamr.com> confusingly similar to TEVA). The Panel considers the disputed domain name to be confusingly similar to a mark in which Complainant has rights.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, FA 741828 (Forum Aug. 18, 2006).
The disputed domain name incorporates Complainant's registered mark without authorization, and its sole apparent use has been to impersonate Complainant for fraudulent purposes. Such use does not give rise to rights or legitimate interests under the Policy. See, e.g., Teva Pharmaceutical Industries Ltd. v. Whois Privacy, Private by Design, LLC / Christopher j Fowler, supra (finding lack of rights or interests in similar circumstances).
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered or is being used in bad faith. Under paragraph 4(b)(i) of the Policy, bad faith may be shown by evidence that a domain name was acquired "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 [Respondent's] documented out-of-pocket costs directly related to the Domain Name." Under paragraph 4(b)(iii), bad faith may be shown by evidence that Respondent registered the disputed domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
Use of a domain name incorporating a registered mark to impersonate the mark owner for fraudulent purposes is sufficient to show bad faith for purposes of the Policy. See, e.g., Teva Pharmaceutical Industries Ltd. v. Whois Privacy, Private by Design, LLC / Christopher j Fowler, supra (finding bad faith registration and use in similar circumstances). Use of a privacy registration service, particularly when combined with other efforts to hide the registrant's identity, provides a further indication of bad faith. See, e.g., Teva Pharmaceutical Industries Ltd. v. Whois Privacy Service / Luke Roy, supra (finding bad faith based upon respondent's failure to use the domain name, failure to participate in UDRP proceedings, use of privacy registration service, and provision of false or incomplete contact details). The Panel finds that the disputed domain name was registered or is being used in bad faith.
Having considered the three elements required under the CentralNic Dispute Resolution Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <tevapharm.us.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: December 16, 2021
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