DECISION

 

Teva Respiratory, LLC and Norton (Waterford) Limited v. Ariel Torres / Pavel Sobol

Claim Number: FA2401002078904

PARTIES

Complainant is Teva Respiratory, LLC and Norton (Waterford) Limited ("Complainant"), represented by Cecilia Borgenstam of SILKA AB, Sweden. Respondent is Ariel Torres / Pavel Sobol ("Respondent"), USA.

 

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <proairdigihaler.us> and <sudocrem.us>, registered with Dynadot Inc.

 

PANEL

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.

 

Charles A. Kuechenmeister, Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on January 12, 2024; Forum received payment on January 12, 2024.

 

On January 15, 2024, Dynadot Inc. confirmed by e-mail to Forum that the <proairdigihaler.us> and <sudocrem.us> domain names are registered with Dynadot Inc. and that Respondent is the current registrant of the names. Dynadot Inc. has verified that Respondent is bound by the Dynadot Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce's usTLD Dispute Resolution Policy (the "Policy").

 

On January 17, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint setting a deadline of February 6, 2024 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@proairdigihaler.us, postmaster@sudocrem.us. Also on January 17, 2024, 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 February 7, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Charles A. Kuechenmeister as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that Forum has discharged its responsibility under Paragraph 2(a) of the Rules to the usTLD Dispute Resolution Policy ("Rules"). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD Rules, Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of a Response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PRELIMINARY ISSUES:

Multiple Complainants

Two parties, Teva Respiratory, LLC and Norton (Waterford) Limited, filed this administrative proceeding as Complainants. The rules governing multiple complainants are Rule 3(a) and the Forum's Supplemental Rule 1(e). Rule 3(a) states, "Any person or entity may initiate an administrative proceeding by submitting a complaint in accordance with the Policy and these Rules."  Forum's Supplemental Rule 1(e) defines "The Party Initiating a Complaint Concerning a Domain Name Registration" as the "single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint."  Previous panels have interpreted Forum's Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int'l Olympic Comm. v. Malik, FA 666119 (Forum May 12, 2006), the panel stated:

 

It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.

 

In this case, the Complaint states that both Complainants are affiliated companies within the same corporate group, and that is substantiated by the Declaration of the chief trademark counsel for the parent corporation, Teva Pharmaceutical Industries, Ltd. submitted as Complaint Annex 2. This corporate relationship demonstrates a sufficient nexus among the named Complainants to meet the requirements of Supplemental Rule 1(e).  Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. kim seong su, FA1904001840242 (June 3, 2019) ("Skechers U.S.A., Inc. II is a wholly owned subsidiary of Skechers U.S.A., Inc.  . . . As the two Complainants in this case are in fact closely related, being part of the same company structure, the Panel accepts that the evidence in the Complaint is sufficient to establish a sufficient nexus or link between the Complainants, and the Panel will therefore treat them together as a single entity in this proceeding."), Bed Bath & Beyond Procurement Co, Inc. et al. v. shaoxuan li / lishaoxuan, FA1902001829423 (Forum Mar. 11, 2019). The same is true of intellectual property holding companies and their corporate parents. GUESS IP Holder L.P. and VUSE?, Inc. v. New Ventures Services, Corp., FA1901001825019 (Forum Feb. 10, 2019) ("Complainant GUESS IP Holder is a holding company concerned with Complainant GUESS, Inc.'s intellectual property. The Panel therefore finds that the two Complainants (herein referred to collectively as Complainant) have a sufficient nexus to each other and to the matters complained of such that they shall be treated as if a single entity.").  It is thus proper for both Complainants to file and prosecute a single Complaint. The Panel will treat them as a single entity for the purposes of this proceeding. All references to "Complainant" in this Decision, even though in the singular, are to both named Complainants.

 

Multiple Respondents and Domain Names

The Complaint names two persons as Respondents and relates to two domain names. Paragraph 3(c) of the Rules provides that a "complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder."  Complainant alleges that both domain names are operated by the same person or entity using different aliases. The information furnished to Forum by the registrar shows that the domain names are registered under different names at different addresses, but both of them redirect visitors to the <dan.com> domain reselling platform, where they are offered for sale at the same price (Complaint Annex 4). They were registered with the same registrar on the same day and share the same IP address (WHOIS printouts included in Complain annex 3). They both target the same corporate group. On this evidence, the Panel finds that both domain names are registered to the same person or entity or are under common control and will proceed as to both of them. Caterpillar v. Arendt, FA1805001789701 (Forum July 2, 2018), ("The Panel finds that the domain names are under common control because the three domain names are constructed in the same manner, were registered on the same date with the same registrar, have been used in the same way, and use Cloudfare servers. Also, the registrant used the same privacy service for all three domain names. These elements are sufficient to find that the domain names were registered by the same domain name holder."). References to "Respondent" in this Decision, even though in the singular, refer to both named Respondents.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant Teva Respiratory, LLC (Teva) is a well-known manufacturer of respiratory products such as inhalers. Complainant Norton (Waterford) Limited (Norton) distributes an over-the-counter medicated skin cream. Teva has rights in the PROAIR DIGIHALER mark through its registration of that mark with the United States Patent and Trademark Office (USPTO). Norton has rights in the SUDOCREM mark through its registration of that mark with the European Union Intellectual Property Office (EUIPO). The <proairdigihaler.us> mark is virtually identical and confusingly similar to the PROAIR DIGIHALER mark and the <sudocrem.us> domain name is virtually identical and confusingly similar to the SUDOCREM mark because they both fully incorporate those marks, merely adding the ".us" country code top-level domain (ccTLD).

 

Respondent has no legitimate interests in the domain names. It is not the owner or beneficiary of a trade or service mark that is identical to the domain names, it has not been known by the domain names, it is not connected or affiliated with Complainant and Complainant has not authorized or licensed Respondent to use its marks, and Respondent is offering the domain names for sale.

 

Respondent registered or uses the domain names in bad faith. It registered the domain names with actual knowledge of Complainant's rights in its marks, and it registered the domain names primarily for the purpose of selling them to Complainant and to prevent Complainant from reflecting its marks in corresponding domain names.

 

B. Respondent

Respondent did not submit a Response in this proceeding.

 

FINDINGS

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 a complainant to prove each of the following three elements to obtain an order cancelling or transferring a domain name:

 

(1)       the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(2)       the 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.

 

Given the similarity between the Uniform Domain Name Dispute Resolution Policy ("UDRP") and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.

 

In view of Respondent's failure to submit a Response, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules the Panel will decide this administrative proceeding on the basis of Complainant's undisputed representations 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. Nevertheless, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) ("Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint"), WIPO Overview 3.0, at ¶ 4.3 ("In cases involving wholly unsupported and conclusory allegations advanced by the complainant, . . . panels may find that—despite a respondent's default—a complainant has failed to prove its case.").

 

The Panel finds as follows with respect to the matters at issue in this proceeding:

 

Identical and/or Confusingly Similar

The PROAIR DIGIHALER and SUDOCREM marks were registered to Complainant with the USPTO (Reg. No. 5,932,346) on December 10, 2019 and with the EUIPO (Reg. No. 000239442) on October 2, 2000 respectively (USPTO and EUIPO registration certificates included in Complaint Annex 5). Complainant's registrations of its marks with these agencies establishes its rights in those marks for the purposes of Policy ¶ 4(a)(i).  Bittrex, Inc. v. Domain Privacy Services, FA 1786849 (Forum June 15, 2018) (finding Complainant has trademark rights in the BITTREX mark through registration of the mark with the EUIPO and the USPTO.).

 

Respondent's <proairdigihaler.us> domain name is identical or confusingly similar to Complainant's PROAIR DIGIHALER mark. It fully incorporates the mark, merely omitting the space and adding the ".us" ccTLD. Respondent's <sudocrem.us> domain name is identical or confusingly similar to Complainant's SUDOCREM mark because it fully incorporates the mark, merely adding the ".us" ccTLD. These changes do not distinguish the domain names from Complainant's marks for the purposes of Policy ¶ 4(a)(i).  Bond & Co. Jewelers, Inc. v. Tex. Int'l Prop. Assocs., FA 937650 (Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant's mark under Policy ¶ 4(a)(i))"), Farouk Systems, Inc. v. Jack King / SLB, FA 1618704 (Forum June 19, 2015) (finding, "The ccTLD ".us" designation is inconsequential to a Policy ¶ 4(a)(i) analysis.").  The WIPO Overview 3.0, at ¶ 1.7, states that the test for confusing similarity "typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the domain name."  Notwithstanding the changes described above, Complainant's marks are clearly recognizable within the domain names.

 

For the reasons set forth above, the Panel finds that the domain names are identical or confusingly similar to the PROAIR DIGIHALER and SUDOCREM marks, in which Complainant has substantial and demonstrated rights.

 

Rights or Legitimate Interests

If a complainant makes a prima facie case that the respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden of production shifts to respondent to come forward with evidence that it has rights or legitimate interests in it. Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) ("Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests"). If a respondent fails to come forward with such evidence, the complainant's prima facie evidence will be sufficient to establish that respondent lacks such rights or legitimate interests. If the respondent does come forward with such evidence, the Panel must assess the evidence in its entirety. At all times, the burden of proof remains on the complainant. WIPO Overview 3.0, at ¶ 2.1.

 

Policy ¶ 4(c) lists the following four nonexclusive circumstances, any one of which if proven can demonstrate a respondent's rights or legitimate interests in a domain name for the purposes of Policy ¶ 4(a)(ii):

 

(i)                      The respondent is the owner or beneficiary of a trade or service mark that is identical to the domain name;

(ii)                      Before any notice to the respondent of the dispute, the 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;

(iii)                      The respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or

(iv)                      The 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.

 

Complainant states that Respondent has no legitimate interests in the domain names because (i) it is not the owner or beneficiary of a trade or service mark that is identical to the domain names, (ii) it has not been known by the domain names, (iii) it is not connected or affiliated with Complainant and Complainant has not authorized or licensed it to use Complainant's marks, and (iv) Respondent is offering the domain names for sale.  These allegations are addressed as follows:

 

To address the Policy ¶ 4(c)(i) factor, concerning whether the Respondent is the owner or beneficiary of a trade or service mark that is identical to the domain names, Complainant conducted a search of the WIPO Global Brand Database for evidence of either domain name being associated with either named Respondent, with "no results shown," and a Google search for both marks at issue in this proceeding that pointed only to Complainant. This evidence establishes a prima facie case as to Policy ¶ 4(c)(i), and in the absence of any evidence to the contrary, the Panel finds that Respondent is not the owner or beneficiary of a valid trade or service mark identical to the domain names.

 

Complainant states that Respondent has no connection or affiliation with it and that it has never authorized or permitted Respondent to use its mark. Complainant has specific competence to make this statement, and it is unchallenged by any evidence before the Panel. In the absence of evidence that a respondent is authorized to use a complainant's mark in a domain name or that a respondent is commonly known by the disputed domain name, the respondent may be presumed to lack rights or legitimate interests in the domain name. IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant's mark and failed to submit evidence that it is commonly known by the domain name), Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug. 3, 2017) ("Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant's trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.").

 

The WHOIS printout submitted as Complaint Annex 3 and the information furnished to Forum by the registrar list "Ariel Torres" and "Pavel Sobol" as the registrants of the domain names. These names bear no resemblance to the domain names. Evidence could, of course, in a given case demonstrate that the respondent is commonly known by a domain name different from the name in which it registered the domain name, e.g., the case of a domain name incorporating the brand name of a specific product offered by and associated with the respondent. In the absence of any such evidence, however, and in cases where no response has been filed, UDRP panels have consistently held that WHOIS evidence of a registrant name which does not correspond with the domain name is sufficient to prove that the respondent is not commonly known by the domain name. Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent's use of the same), Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The Panel is satisfied that Respondent has not been commonly known by the domain names for the purposes of Policy ¶ 4(c)(iii).

 

Complaint Annex 4 consists of screenshots of the <dan.com> platform to which the domain names redirect. They advertise the domain names for sale at a price of $1,450.00 each. It is clear that Respondent is affirmatively advertising and offering the domain names for sale to the general public. A general offer of sale is neither a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(ii) nor a legitimate noncommercial or fair use within the meaning of Policy ¶ 4(c)(iv), and is thus evidence of a lack of rights or legitimate interests. Enterprise Holdings, Inc. v. Huang Jia Lin, FA1504001614086 (Forum May 25, 2015) ("Accordingly, the Panel finds that Respondent's general attempt to sell the disputed domain name is further evidence of Respondent's lack of rights and legitimate interests under Policy ¶ 4(a)(ii)."), Twentieth Century Fox Film Corporation v. Diego Ossa, FA1501001602016 (Forum Feb. 26, 2015) ("The Resolving parked page advertises the sale of the domain name with the message 'Would you like to buy this domain?'  The Panel accepts this offer as demonstrative of Respondent's willingness to sell the disputed domain name, and finds that such behavior provides additional evidence that Respondent lacks rights or legitimate interests in the disputed domain name."). 

 

The evidence furnished by Complainant establishes the required prima facie case. On that evidence, and in the absence of any evidence from Respondent, the Panel finds that Respondent has no rights or legitimate interests in the domain names.

 

Registration or Use in Bad Faith

Policy ¶ 4(b) sets forth a nonexclusive list of four circumstances, any one of which if proven would be evidence of bad faith use and registration of a domain name. They are as follows:

 

(i)                      circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant which 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)                      the respondent has 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; or

(iii)                      the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv)         by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the 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 the respondent's web site or location or of a product of service on the respondent's web site or location.

 

The evidence of Respondent's conduct discussed above in the rights or legitimate interests analysis also supports a finding of bad faith registration and use, based upon one or more of the foregoing grounds articulated in the Policy and upon additional grounds adopted by UDRP and usDRP panels over the years. First, Respondent is affirmatively advertising and offering the domain names for sale to the general public at a price of $1,450.00 each, which is substantially in excess of normal out-of-pocket costs directly related to a domain name, as described in Policy ¶ 4(b)(i). A general offer of sale of a confusingly similar domain name is evidence of bad faith registration and use under Policy ¶ 4(b)(i).  Diners Club Int'l Ltd. v. Domain Admin******It's all in the name******, FA 156839 (Forum June 23, 2003) (finding that when the domain name itself notes that it is "available for lease or sale," evidence that the domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(i) can be inferred from the fact that "the sole value of the [<wwwdinersclub.com] domain name is dictated by its relation to the complainant's registered DINERS CLUB mark). 

 

Further, Respondent's registration of the domain names prevents Complainant from reflecting its mark in them. Complainant's principal web sites are located at <www.digihaler.com> and <www.sudocrem.com> (screenshots submitted as Complaint Annexes 7 and 9) but the domain names, which merely add a ccTLD to Complainant's marks, could also be useful or valuable to Complainant for attracting Internet users to its sites. Policy ¶ 4(b)(ii) contemplates that a respondent registered the domain name at issue in order to prevent the mark owner from reflecting its mark in a corresponding domain name. The evidence is not clear whether the Respondent here registered the domain names with that specific intent, but the fact that Respondent offers the domain names, which are so closely and specifically associated with Complainant, for sale strongly suggests that this was at least one of Respondent's motives in registering the domain names. Respondent's registration of these domain names would give it substantial leverage in any negotiations with Complainant for a transfer of them. Further, Policy ¶ 4(b) recognizes that mischief can assume many different forms and takes an open-ended approach to bad faith, listing some examples without attempting to enumerate all its varieties. Worldcom Exchange, Inc. v. Wei.com, Inc., WIPO Case No. D-2004-0955 (January 5, 2005), Bloomberg Finance L.P. v. Domain Admin - This Domain is For Sale on GoDaddy.com / Trnames Premium Name Services, FA 1714157 (Forum Mar. 8, 2017) (determining that Policy ¶ 4(b) provisions are merely illustrative of bad faith, and that the respondent's bad faith may be demonstrated by other allegations of bad faith under the totality of the circumstances).  Respondent certainly knew that its registration and use of the domain names, which incorporate Complainant's marks verbatim, would prevent Complainant from registering and using them itself and that this was wrongful as against Complainant. It intentionally pursued this course of action, and this is manifest evidence of bad faith registration and use for the purposes of Policy ¶ 4(a)(iii).

 

Finally, it is evident that Respondent had actual knowledge of Complainant and its marks when it registered the domain names in July 2023 (WHOIS printouts included in Complainant Annex 3 show creation dates).  Complainant's SUDOCREM mark has been used at least since the 1996 filing date shown in the EUIPO registration certificate included in Complaint Annex 5, and its PROAIR DIGIHALER mark has been used at least since the 2020 filing date shown in the USPTO registration certificate included in Complaint Annex 5. Moreover, both marks are unique, coined terms that have no meaning apart from their association with Complainant. There would be no reason for any person selecting a domain name to choose either one of these except to target this Complainant.  There is no question that Respondent knew of Complainant and its marks when it registered the domain names. In light of the non-exclusive nature of Policy ¶ 4(b), registering a confusingly similar domain name with actual knowledge of a complainant's rights in its mark is evidence of bad faith registration and use for the purposes of Policy ¶ 4(a)(iii).  Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).

 

For the reasons set forth above, the Panel finds that Respondent registered and is using the domain names in bad faith within the meaning of Policy ¶ 4(a)(iii).").

 

DECISION

Complainant having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <proairdigihaler.us> and the <sudocrem.us> domain names be TRANSFERRED from Respondent to Complainant.

 

 

 

Charles A. Kuechenmeister, Panelist

February 9, 2023