Teva Pharmaceutical Industries Ltd. v. J Mandy / Duke Energy Corporation
Claim Number: FA2303002035682
Complainant is Teva Pharmaceutical Industries Ltd. (“Complainant”), represented by Cecilia Borgenstam of SILKA AB, Sweden. Respondent is J Mandy / Duke Energy Corporation (“Respondent”), North Carolina, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <teva-usa.us.org>, registered with NameCheap, Inc.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant
participated in the mandatory CentralNic Mediation, and the mediation process
was terminated.
Complainant submitted a Complaint to Forum
electronically on March 14, 2023; Forum
received payment on March 14, 2023.
On March 17, 2023, NameCheap, Inc. confirmed by e-mail to Forum that the <teva-usa.us.org> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the CentralNic Dispute Resolution Policy (the “CDRP Policy”).
On March 20, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 10, 2023 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@teva-usa.us.org. Also on March 20, 2023, the Written Notice of the Complaint, notifying Respondent of the e-mail 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, Forum transmitted to the parties a Notification of Respondent Default.
On April 17, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 to the CDRP Dispute Resolution Policy (“Rules”). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the CDRP Policy, CDRP 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, established in 1935, is a global pharmaceutical company doing business online via the domain name <tevausa.com>.
Complainant holds a registration for the TEVA trademark, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 1,567,918, registered on November 28, 1989, and renewed most recently as of January 6, 2020.
Respondent registered the domain name <teva-usa.us.org> on January 6, 2023.
The domain name is confusingly similar to Complainant’s TEVA mark.
Respondent has not been commonly known by the domain name.
Complainant has not licensed or otherwise authorized Respondent to use its TEVA mark in a domain name.
Respondent does not use the domain name for either a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Respondent lacks both rights to and legitimate interests in the domain name.
Respondent registered the domain name with knowledge of Complainant and its rights in the TEVA mark.
The domain name is currently inactive because it has been suspended by its registrar.
Respondent has both registered and used the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and has been 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights to or legitimate interests in respect of the domain name; and
iii. the domain name has been registered or is being used by Respondent in bad faith.
The CDRP and its accompanying Rules require that the parties participate in a CentralNic Mediation, and that such mediation be terminated prior to submission of the Complaint. Complainant certifies in its Complaint that these provisions of the Policy and Rules have been satisfied.
In light of the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the CDRP, the Panel will draw upon UDRP decisions, as appropriate, in rendering its decision.
By virtue of its registration of the TEVA trademark with a national trademark authority, the USPTO, Complainant has established that it has rights in that mark sufficient to satisfy the requirement of Policy¶4(a)(i) that it demonstrate standing to pursue its claim against Respondent in this proceeding. See, for example, Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum August 4, 2017):
Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.
Turning to the central question posed by Policy¶4(a)(i), we conclude from a review of the record that Respondent’s <teva-usa.us.org> domain name is confusingly similar to Complainant’s TEVA mark. The domain name incorporates the mark in its entirety, with the addition of a hyphen (-) after the mark and of the letters “usa,” an abbreviation for United States of America, where Complainant does business. This construction mimics Complainant’s the core content of Complainant’s official domain name <tevausa.com>, under which it does business in the United States. The remainder of the challenged domain name consists of the country code Top Level Domain (“ccTLD”) “.us,” which is the international abbreviation for “United States,” and the generic Top Level Domain (“gTLD”) “.org.” These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy. See, for example, Blue Cross and Blue Shield Association v. Shi Lei aka Shilei, FA 1784643 (Forum June 18, 2018):
A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy¶4(a)(i) analysis because domain name syntax requires TLDs.
See also BHP Billiton Innovation Pty Ltd v. Oloyi, WIPO Case No. D2017-0284 (finding that the addition of “usa” to the mark of another in creating a domain name was insufficient to distinguish the resulting domain name from that mark). Further see Dansko, LLC v. zhang wu, FA 1757745 (Forum December 12, 2017) (finding the domain name <danskoshoes.us.com> confusingly similar to the mark DANSKO despite the addition to it of both the ccTLD “.us” and the gTLD “.org”).
Finally, as to Respondent’s inclusion of a hyphen (-) in the contested domain name, this alteration of Complainant’s mark is of no consequence to our analysis under Policy¶4(a)(i) because a hyphen adds nothing to the meaning, nor does it change the phonetic character, of the result. See, for example, Innomed Techs., Inc. v. DRP Servs., FA 221171 (Forum February 18, 2004) (finding that hyphens included in a domain name are irrelevant in an analysis of confusing similarity under Policy¶4(a)(i)).
Under Policy¶4(a)(ii), Complainant must make out a prima facie showing that Respondent has neither rights to nor legitimate interests in the domain name <teva-usa.us.org>, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP¶4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum September 25, 2006):
Complainant must … make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See, for example, Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless they are clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy¶4(c)(i)-(iii), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name that are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <teva-usa.us.org> domain name, and that Complainant has not licensed or otherwise authorized Respondent to use the TEVA mark in a domain name. Moreover, the pertinent WHOIS information identifies the registrant of the domain name as “J Mandy,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the ambit of Policy¶4(c)(ii). See, for example, Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum September 4, 2018) (concluding that a respondent was not commonly known by a disputed domain name incorporating the GOOGLE mark where the relevant WHOIS record identified that respondent as “Bhawana Chandel,” and nothing in the record showed that that respondent was authorized to use a UDRP Complainant’s mark in any manner).
We next observe that Complainant asserts, without objection from Respondent, that Respondent has used the <teva-usa.us.org> domain name to pass itself off as Complainant in furtherance of a fraudulent phishing scheme by which it sought to induce unsuspecting e-mail recipients to make money transfers to Respondent. This employment is neither a bona fide offering of goods or services by means of the domain name under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of it under Policy¶4(c)(iii) such as would confirm in Respondent rights to or legitimate interests in the domain name as provided in those subsections of the Policy. See, for example, DaVita Inc. v. Cynthia Rochelo, FA 1738034 (Forum July 20, 2017):
Passing off in furtherance of a phishing scheme is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use.
The Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
The record before us reflects that Complainant has been in business and operating under the name and mark TEVA for more than 75 years and has developed into a global pharmaceutical enterprise with an official web address at <tevausa.com>. Respondent’s <teva-usa.us.org> domain name is substantively a copy of that address, and the uncontested facts set out in the Complaint show that Respondent has used the domain name to pass itself off as a former employee of Complainant in furtherance of a phishing scheme by which it sought fraudulently to induce unsuspecting e-mail recipients to make transfers of money to Respondent.
It is thus clear both that Respondent knew of Complainant and its rights in the TEVA trademark when it registered the domain name, and that, when it did so, it was motivated by the intent to profit illicitly from confusion thus caused among Internet users as to the possibility of Complainant’s association with the domain name. That Respondent’s conduct in this regard must be disruptive of Complainant’s business and its relationships with its customers is manifest. Under Policy ¶4(b), therefore, it stands as proof of Respondent’s bad faith in registering the domain name. See, for example, Teva Pharmaceutical Industries, Ltd v. Oneandone Private Registration, 1&1 Internet Inc / Kristin Beckman, WIPO Case No. D2018-1029:
The Panel finds that[,] given Complainant's longstanding, widespread and extensive use of the Trademarks, it would not be feasible to consider that Respondent – at the time of the registration of the Domain Names – could not have known the Trademarks.
That the domain name is not being actively employed at present does not change the outcome. This is so because what matters most on the question of registration in bad faith is the set of circumstances existing at the time of registration, and also because the Policy expressly provides that bad faith registration of a domain name, without regard to its subsequent use, is sufficient to justify a decision transferring the domain name to Complainant. For these reasons, we have no need to explore in detail the circumstances of its prior use, and we decline to do so.
The Panel thus finds that Complainant has met its obligations of proof under Policy¶4(a)(iii).
Complainant having established all three elements required to be proven under the CDRP Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <teva-usa.us.org> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: April 20, 2023
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